Tran, Bao

Patent Trials and Appeals Board

Feb 11, 2022

2022000643 (P.T.A.B. Feb. 11, 2022)

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. 15/896,063 02/14/2018 Ha Tran AFL-MED FES 2454 31688 7590 02/11/2022 TRAN & ASSOCIATES PO Box 68 Saratoga, CA 95071-0068 EXAMINER ALTER MORSCHAUSE, ALYSSA MARGO ART UNIT PAPER NUMBER 3792 MAIL DATE DELIVERY MODE 02/11/2022 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 PATENT TRIAL AND APPEAL BOARD Ex parte HA TRAN Appeal 2022-000643 Application 15/896,063 Technology Center 3700 Before JOHN C. KERINS, DANIEL S. SONG, and BRANDON J. WARNER, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1-20, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). The Appellant identifies the real party in interest as “the inventor Bao Tran.” Appeal Br. 1. However, the record of the Patent Office indicates “Ha Tran” is the inventor. Appeal 2022-000643 Application 15/896,063 2 CLAIMED SUBJECT MATTER The claims are directed to a method for augmenting or assisting a human body. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for assisting a user, the method comprising: embedding flexible sensors in clothing to capture body signals for a task involving muscle movement grammar with a plurality of sub-muscle movements from actuating individual upper and lower arm muscles as a group, or from actuating individual upper and lower leg muscles as a group; during training, capturing from a user’s body electrical signals associated with a predetermined task and training a deep learning neural network to generate compositional models with one or more top layers enabling composition of features from lower layers to recognize the captured body electrical signals with the predetermined task, wherein the predetermined task includes one of: daily movement, living pattern, walking, locomotion, hand movement, finger movement, and gesture; during operation, applying the neural network to assist the user to perform a desired task by generating signals learned during training by applying an output of the neural network to a functional electrical stimulation (FES) circuit to provide electrical stimuli to the user’s body to perform the desired task. Appeal Br. 22 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Simon et al. (“Simon”) US 2011/0230701 A1 Sept. 22, 2011 Tran et al. (“Tran”) US 2018/0001184 A1 Jan. 4, 2018 Appeal 2022-000643 Application 15/896,063 3 REJECTIONS 1. Claims 9-11 are rejected under 35 U.S.C. § 112(a) as failing to be enabled. Final Act. 3. 2. Claims 1-20 are rejected under 35 U.S.C. § 112(a) as lacking adequate written description. Final Act. 5. 3. Claims 1-20 are rejected under 35 U.S.C. § 112(b) as being indefinite. Final Act. 6. 4. Claims 1-8 and 12-20 are rejected under 35 U.S.C. § 103 as being unpatentable over Tran in view of Simon. Final Act. 10. OPINION Initially, the Appellant asserts that the Examiner “never established the proper level of skill in the art, which renders fatally defective the 112 and 103 rejections,” and requests reversal of the rejections based thereon. Appeal Br. 3, 6. However, the Appellant’s assertion is not entirely correct because, as the Examiner points out, “the level of skill was established on pages 4-5 of the Final Office Action.” Ans. 15; see also Final Act. 4 (“Although the level of one of ordinary skill in the art might be high . . . .”). In addition, as the Appellant sets forth in its Appeal Brief, the cited prior art can be considered as representative of the level of ordinary skill in the art. Appeal Br. 3 (stating that the Appellant will “rely on the level of skill of the inventors in the [prior art] references.”); see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’”). Appeal 2022-000643 Application 15/896,063 4 Regardless, this issue is moot because there is no material dispute that the level of skill of one of ordinary skill is high. See Appeal Br. 5 (“the level of skill is an extremely skilled in the art”); Final Act. 4 (the Examiner conceding that “the level of one of ordinary skill in the art might be high.”). Accordingly, we review the issues presented in the appeal accordingly. Rejection 1: Enablement of Claims 9-11 The Examiner rejects dependent claims 9-11 for failure to “reasonably provide enablement for ‘sacral nerve stimulation to reduce weight’ and ‘heart nerve stimulation . . . to reduce risk of heart failure or heart attack.” Final Act. 3. According to the Examiner, although the Specification is enabled “for learning sacral and heart nerve stimulation,” it does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to practice the sacral and heart nerve stimulation commensurate in scope with these claims. There is no disclosure how to produce such and heart nerve stimulation such that one skilled in the art is unable to practice the claimed invention without undue experimentation. Final Act. 3 (noting factors under In re Wands for undue experimentation). The Examiner further explains that: In the present application, the breadth of the claims encompasses an extremely broad number of options (i.e., stimulation signal characteristics, location and duration of stimulation, therapy quantifications and parameters), none of which are disclosed or claimed. The nature of the invention [recited in these claims] relates to a specific embodiment directed to sacral and heart nerve stimulation. Although the level of one of ordinary skill in the art might be high, the specification does not provide directions how to produce and obtain stimulation and therapy parameters to achieve “sacral nerve stimulation to reduce weight” and “heart nerve stimulation ... to reduce risk of heart failure or heart attack” since there are no examples provided in Appeal 2022-000643 Application 15/896,063 5 the specification. Still further, there is no statistical information provide to believe there would be predictability in the art. Final Act. 4-5; see also Ans 17. Accordingly, the Examiner determines that “a reasonable scope of the claims is non-enabled and would require undue experimentation to practice the full claim scope.” Final Act. 5. We agree with the Examiner and address the Appellant’s arguments below. The Appellant argues that “[c]laims 9-11 apply the neural network or learning machine to process sensor data to learn muscle activities for the tasks (such as weight, heart issues, or bowel/bladder/incontinence, among others).” Appeal Br. 6. As such, the Appellant argues that “[t]he meaning is clear to one skilled in the art.” Appeal Br. 6. However, the Appellant’s argument is misdirected because the issue raised in this rejection of the recitations of claims 9-11 is that of enablement, not indefiniteness. The Appellant also argues that “sacral nerve stimulation is detailed at least on page 28 and 90-91 and FIGS. 8A-8B,” and that “heart stimulation is detailed at least on pages 28, 76, 93-100.” Appeal Br. 6. The Appellant further argues that: The specific location of sacral nerve or heart nerve happens to be the place the electrodes are placed, but the system operation remains the same and one skilled in the art would know how to move the electrodes to the specific spots indicated, be it the nerve, the bowel/bladder, or any locations. The neural network learning mechanism does not change with the electrode position and thus the disclosure is fully enabled. The inventor recognized that the control of muscles using FES can be applied to cause bowel and bladder movement and incontinence. Appeal Br. 7. According to the Appellant, Biomedical engineers know how to place sensors for capturing data associated with particular actions, and providing such data Appeal 2022-000643 Application 15/896,063 6 to train AI is known and engineers would be able to implement my teachings. For example, as to claim[s] 9 and 11, a biomedical engineer would place the sensor near the sacral nerve and the neural network learns sacral nerve stimulation to reduce weight. As to claim 10, sensors would be placed near the heart and other locations to capture blood pressure and such data is provided to the neural network which learns heart nerve stimulation to control blood pressure or to reduce risk of heart failure or heart attack. Appeal Br. 8. The Appellant points out “there was over 100 pages of direction and guidance in the specification,” and that this disclosure “is enabling to such POSA.” Appeal Br. 11, 18. The Appellant’s arguments are unpersuasive because, as the Examiner explains, “establishing that the prior art operates to stimulate nerves to achieve some effect(s), does not constitute a working example of learning the appropriate stimulus ‘to reduce weight’, or ‘control blood pressure’ or ‘reduce risk of heart failure’ or ‘reduce risk of heart attack’ or ‘bowel or bladder movement’ or ‘incontinence’ (as recited in claims 9-11).” Ans. 18- 19. The Examiner is correct that the issue is whether one skilled, by reading applicant’s disclosure, could make and use a neural network such that it could “learn” an appropriate stimulus to achieve “reduce weight” or “control blood pressure” or “reduce risk of heart failure” or “reduce risk of heart attack” or “bowel or bladder movement” or “incontinence[”] (as recited in claims 9-11) in absence of the exact nature of the stimulus which would achieve the stated effects. Merely applying a stimulus does not achieve those effects, so it would not be possible for one skilled to train the neural network to “learn” the sacral nerve stimulation or heart nerve stimulation to produce those effects. Furthermore, merely applying a stimulus does not achieve those effects, so it would not be possible for one skilled to train the neural network to “learn” the sacral nerve stimulation or heart never stimulation to produce those effects. Appeal 2022-000643 Application 15/896,063 7 Ans. 15-16; see also Ans. 17. As set forth in the Final Action, stimulation to attain a particular affect may require specific “stimulation signal characteristics, location and duration of stimulation, therapy quantifications and parameters[], none of which are disclosed or claimed.” Final Act. 4. Indeed, both claims 9 and 11 recite learning of sacral nerve stimulation, but further recite the differing effects of reducing weight and controlling bowel or bladder movements as a result of such stimulation. It is not apparent where the Specification provides specific details as to what differences there are in the stimulation of the sacral nerve that would be learned by the neural network to attain these different effects. Therefore, we agree with the Examiner that “substantial and undue experimentation would be required on the part of the skilled artisan in order to train a neural network to achieve the stated effects by the appropriate stimulation, if at all.” Ans. 17; see also Final Act. 5 (“there [are] no specifics to allow constructive reduction to practice without the requirement of undue experimentation to practice the full scope of the claimed invention.”); Ans. 16 (“There is no disclosure how to produce such and heart nerve stimulation such that one skilled in the art is unable to practice the claimed invention without undue experimentation.”). Accordingly, this enablement rejection of claims 9-11 is affirmed. Rejection 2: Written Description The Examiner rejects claims 1-20 as lacking adequate written descriptive support. Final Act. 5. In particular, the Examiner determines that the recitation “muscle movement grammars” recited in independent claims 1 and 20 lacks written descriptive support in the Specification. Final Appeal 2022-000643 Application 15/896,063 8 Act. 5. The Examiner explains that although there “is support for ‘grammar’ and the use of ‘grammar’ by the neural network to determine movement . . . as well as muscle movement being comprised of sub-muscle movement . . . there is no support for ‘muscle movement grammars’.” Final Act. 5. It is not apparent where the Appellant submits arguments in its Appeal Brief with respect to this rejection. The Appellant has also not submitted a Reply Brief. The Appellant does note under the heading “B. CLAIMS 9-11 ARE ENABLING,” that “[t]he ‘muscle movement’ term in claims 1 and 20 is my way of expressing that muscle activities can be grouped into related sub-groups . . . the muscle movement grammar is done to recognize the muscle movement. The person applying the AI to learn patterns would understand this,” and “[a]n engineer would have no problem applying the software to detect the muscle movement and the grammar upon reading the disclosure of the patent application.” Appeal Br. 8-9. However, the Examiner has already acknowledged that there is sufficient support for “muscle movement” as well as “grammar,” individually. Final Act. 5. The issue is whether there is sufficient support in the Specification for the recitation “muscle movement grammars.” In addition, considering the heading used and the fact that the Appellant proceeds to discuss enablement and undue experimentation under In re Wands, it is clear that these arguments are directed to enablement rather than to the separate requirement of adequate written description. The Appellant also submits arguments under the heading “C. THE MUSCLE MOVEMENT GRAMMARS ARE ENABLING TO A POSA,” to the effect that the Specification provides “direction and guidance” so as to not require undue experimentation under In re Wands. Appeal Br. 11. In Appeal 2022-000643 Application 15/896,063 9 that regard, the Appellant further argues that “[g]rammar analysis is explained 78 times, as summarized by the word search.” Appeal Br. 16. However, as the Examiner points out, the Appellant appears to again conflate the different aspects of the statute because the rejection is that of written description, not enablement. Ans. 19; see also id. at 20 (“This is not an enablement issue but rather a possession issue.”). To any extent that the Appellant intended to argue this written description rejection under headings “B” and “C” noted above, we find such arguments unpersuasive because the Appellant fails to specifically explain where written descriptive support is provided for the recitation “muscle movement grammars” in a manner sufficient to establish possession. Moreover, at minimum, the Appeal Brief fails to comply with the requirements of 37 C.F.R. § 41.37(c)(iv) for lack of use of proper headings.2 Therefore, we affirm the rejection of claims 1-20. 2 37 C.F.R. § 41.37(c)(iv) states, inter alia: The arguments shall explain why the examiner erred as to each ground of rejection contested by appellant. Except as provided for in §§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal. Each ground of rejection contested by appellant must be argued under a separate heading, and each heading shall reasonably identify the ground of rejection being contested (e.g., by claim number, statutory basis, and applied reference, if any). Appeal 2022-000643 Application 15/896,063 10 Rejection 3: Indefiniteness The Examiner rejects claims 1-20 as being indefinite. Final Act. 6.3 As to independent claims 1 and 20, the Examiner determines that the recitation “capture body signals for a task involving muscle movement grammar” is indefinite because “[i]t is unclear if the ‘captured body signals’ are in response to activated muscles from ‘actuators’, as disclose[d] in the specification, or from unactuated natural muscle movement,” and it is also “unclear if the claims are capturing body signals or ‘muscle movement grammar’ signals.” Final Act. 6-7. The Examiner also determines that dependent claims 2, 3, 15, 16, and 19, are indefinite because of the recitations therein, which are explained in the Final Action. Final Act. 7-9. Again, like Rejection 2 discussed above, it is not apparent where the Appellant submits arguments contesting this rejection. As discussed above, the Appellant’s arguments under headings “B” and “C” are directed to enablement, and are not pertinent to the indefinite rejection at hand. Accordingly, the Examiner is correct that the Appellant is conflating the different portions of the statute because the rejection is that of indefiniteness, not enablement. Ans. 19. Moreover, the Appeal Brief again fails to comply with the requirements of 37 C.F.R. § 41.37(c)(iv). In sum, the Appellant does not apprise us of error with respect to this rejection. Therefore, we affirm the Examiner’s indefiniteness rejection. 3 The Examiner’s additional indefiniteness rejection of claims 1-20 based on omitting essential steps has been withdrawn. Ans. 14; see also Final Act. 6. Appeal 2022-000643 Application 15/896,063 11 Rejection 4: Obviousness of Claims 1-8 and 12-20 The Examiner rejects claims 1-8 and 12-20 as being unpatentable over Tran in view of Simon. Final Act. 10.4 The Examiner finds that Tran discloses a method for assisting a user substantially as claimed, including sensors embedded in clothing to capture body signals for a task involving muscle movement of the arm or leg, and “surface stimulation (i.e.[,] defibrillation), but does not explicitly disclose functional electrical stimulation (FES).” Final Act. 11. However, the Examiner finds that Simon “discloses non-invasive electrical stimulation using surface electrodes for TENS, NMES, FES and defibrillation.” Final Act. 11 (citing Simon ¶ 15). Based thereon, the Examiner concludes that it would have been obvious to one of ordinary skill in the art “to modify surface electrical stimulation of Tran et al. with the functional electrical surface stimulation (FES) of Simon et al. since such a modification would provide the predictable results of modifying the surface stimulation treatment to meet specific patient therapeutic needs and requirements.” Final Act. 11. We agree with the Examiner’s findings and conclusions, and address the Appellant’s arguments below. 4 Although independent claims 1 and 20 stand rejected as being indefinite for the reasons discussed above relative to Rejection 3, the issues raised in the indefinite recitations do not impact the issues raised in this obviousness rejection. Thus, we do not think it is necessary to reverse the prior art rejection, pro forma, in accordance with In re Steele. Steele, 305 F.2d 859, 862-63 (CCPA 1962). Accordingly, for the sake of compact prosecution, we address the substance of this obviousness rejection, not withstanding the indefiniteness rejection. Appeal 2022-000643 Application 15/896,063 12 The Appellant argues that “Tran uses ECG [electrocardiogram] sensors and upon a predetermined pattern energizes a defibrilator [sic] machine. The defibrillator energizes heart muscle, not arm or leg muscle. Tran does not show learning machine to control arm or leg movement.” Appeal Br. 19; see also id. (“Tran does not teach FES and actuation of muscle activities to perform a movement task for arm movement or leg movements.”). The Appellant points out that “the claims are explicit in moving arms or leg movements,” and that “[d]efibrillation does move heart muscle but the movement is inside the body and that differs from moving hands or legs to accomplish tasks.” Appeal Br. 19. According to the Appellant, the suggested combination would “result[] only in an improved defibrillation and cardiac pacing machine,” which is “inoperative for the claimed invention’s goals of providing autonomy to disabled patients through controlled movement of muscles.” Appeal Br. 20. The Appellant also asserts that “Simon simply teaches conventional FES stimulation. There is no teaching of applying neural network or machine learning to control fine muscle activities.” Appeal Br. 20. The Appellant further asserts that “[a]t best, Simon suggests ‘[a]nother application of surface electrical stimulation is chest-to-back stimulation of tissue, such as emergency defibrillation and cardiac pacing.’ Which when combined with Tran would not result in a system that uses FES and AI to move muscle in a controlled manner for the user as recited in claim 1.” Appeal Br. 20. These arguments are unpersuasive. As to AI and learning, the Examiner is correct in finding that “Tran does teach the requisite deep learning and applied deep learning claimed.” Ans. 22; Final Act. 10-11; Appeal 2022-000643 Application 15/896,063 13 Tran ¶¶ 509, 624. For example, Tran discloses that “data analysis using deep neural network techniques may be used” and that the neural network may be trained. Tran ¶ 509. Tran further disclose the application of “a pattern recognizer such as a neural network or a Hidden Markov Model (HMM).” Tran ¶ 624. In addition, as to arms and legs, Tran discloses its applicability to arms and legs. See Tran ¶¶ 598-622 (disclosing applicability to numerous different sports and movements involved therein). In addition, the Appellant argues Tran individually rather than in combination with Simon; views a person of ordinary skill as an automaton; and does not appear to fully appreciate the rejection. The Examiner is correct in finding that Tran “discloses monitoring body signals and providing appropriately determined surface stimulation by an intelligent device.” Ans. 21. Although Tran disclose such actuation in the context of the heart via defibrillation, Simon specifically discloses that: Functional electrical stimulation (FES) is used to activate nerves innervating muscle affected by paralysis resulting from spinal cord injury, head injury, stroke and other neurological disorders, or muscle affected by foot drop and gait disorders. FES is also used to stimulate muscle as an orthotic substitute, e.g., replace a brace or support in scoliosis management. Another application of surface electrical stimulation is chest-to-back stimulation of tissue, such as emergency defibrillation and cardiac pacing. Simon ¶ 15. This disclosure of Simon is relied upon by the Examiner. Final Act. 11; Ans. 22. Thus, Simon clearly establishes that it was known to those of ordinary skill in the art that FES is used to activate nerves of muscles, and the use of actuation of muscles to address foot drop and gait disorders, i.e., to aid in walking. Moreover, Simon also clearly establishes that it was known to those of ordinary skill in the art that FES is used for defibrillation and Appeal 2022-000643 Application 15/896,063 14 cardiac pacing, which clearly establishes the relevance and applicability of Simon to Tran to those of ordinary skill in the art. Accordingly, in view of the teachings of Tran and Simon in combination, a person of ordinary skill in the art (with high skill level as agreed by the Examiner and the Appellant), would have found it obvious to further modify Tran to provide a method for assisting a user by using FES to activate nerves of muscles, and use such actuation of muscles to address foot drop and gait disorders (i.e., to aid in walking) as taught in Simon instead of exclusively for defibrillation. As the Supreme Court explained: When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). In addition, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. The Appellant further argues that “the combination of Simon with Tran would result in an inoperative system, as the application of Tran’s ECG sensors with the electrical and magnetic stimulators in Simon would not arrive at a working system with FES to move muscle.” Appeal Br. 20-21. According to the Appellant, “the application of defibrillation to control arm or leg muscle is inoperative because large voltage spikes cannot provide fine motor movement, it only shocks the heart into beating again.” Appeal Br. 21. Appeal 2022-000643 Application 15/896,063 15 However, the Appellant’s argument is unpersuasive for reasons already discussed because it ignores the general teachings of Simon with respect to using FES to activate muscle. Moreover, as noted by the Examiner, the Appellant’s argument is merely an assertion, and “there is no evidence that the combination as proposed would not function.” Ans. 22. The Examiner has adequately established that Tran discloses sensors embedded in clothing to capture body signals for a task involving muscle movement of the arm or leg, and that Simon “discloses non-invasive electrical stimulation using surface electrodes,” including FES, to activate nerves of muscles, and the use of actuation of muscles to address foot drop and gait disorders. Final Act. 11. When Tran is modified in view of the teachings in Simon, the limitation “provide electrical stimuli to the user’s body to perform the desired task,” as required by claim 1, and “to move one or more muscles responsive to a predetermined task” as required by claim 20 would be met. Therefore, in view of the above considerations, we affirm the Examiner’s rejection of independent claims 1 and 20. The Appellant does not submit arguments specifically directed to the dependent claims also rejected. Accordingly, claims 2-8 and 12-19 fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION The Examiner’s rejections are affirmed. Appeal 2022-000643 Application 15/896,063 16 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 9-11 112(a) Enablement 9-11 1-20 112(a) Written Description 1-20 1-20 112(b) Indefiniteness 1-20 1-8, 12-20 103 Tran, Simon 1-8, 12-20 Overall Outcome 1-20 TIME PERIOD FOR RESPONSE 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). AFFIRMED