Ex Parte Ibrahim

Patent Trial and Appeal Board

Dec 19, 2012

10526493 (P.T.A.B. Dec. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte IBRAHIM H. IBRAHIM
__________

Appeal 2011-010872
Application 10/526,493
Technology Center 3700
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Before LORA M. GREEN, FRANCISCO C. PRATS, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-33 and 58. We have jurisdiction under 35
U.S.C. § 6(b).
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STATEMENT OF THE CASE
Claims 1, 16, and 58 are the independent claims on appeal. Claim 1 is
representative of the claims on appeal, and reads as follows:
1. A method of determining a position of an external transceiver relative
to an implanted transceiver, the method comprising:
measuring the strength of a magnetic field proximal to the external
transceiver, wherein the magnetic field is generated at least in part by the
external transceiver; and
determining a position of the external transceiver relative to the
implanted transceiver from said measured magnetic field strength.

The following grounds of rejection are before us for review:
I. Claim 58 stands rejected under 35 U.S.C. § 103(a) as being
rendered obvious by Chen1 (Ans. 3).
II. Claims 1-4, 11, 12, 16-19, 28, and 29 stand rejected under 35
U.S.C. § 103(a) as being rendered obvious by the combination of
Jeutter2 and Kung3 (Ans. 5).
III. Claims 1-7, 11-22, and 28-32 stand rejected under 35 U.S.C.
§ 103(a) as being rendered obvious by the combination of Chen
and Kung (Ans. 5).
IV. Claims 8-10, 23-27, and 33 stand rejected under 35 U.S.C.
§ 103(a) as being rendered obvious by the combination of Chen
and Kung as further combined with Bornhoft4 (Ans. 6).

1 Chen et al., US 6,138,681, issued Oct. 31, 2000.
2 Jeutter, US 5,314,453, issued May 24, 1994.
3 Kung, US 6,366,817 B1, issued Apr. 2, 2002.
4 Bornhoft et al., US 2003/0074035 A1, published Apr. 17, 2003.
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We affirm-in-part.

ANALYSIS
Rejections II and III turn on the same issue, and thus we address those
rejections together.
The Examiner rejects claims 1-4, 11, 12, 16-19, 28, and 29 as being
rendered obvious by the combination of Jeutter and Kung (Ans. 5). The
Examiner rejects claims 1-7, 11-22, and 28-32 as being rendered obvious by
the combination of Chen and Kung (Ans. 5).
The Examiner finds that Jeutter “discloses a method and apparatus . . .
for measuring the strength of a magnetic field (e.g. column 6, lines 4-12)”
(Ans. 5). The Examiner notes that Jeutter “fails to teach that the magnetic
field is generated at least in part by an external transceiver” (id.). Similarly,
the Examiner finds that Chen “discloses a method and apparatus . . . for
measuring the strength of a magnetic field (e.g. column 4, lines 25-30)” (id.
at 5-6). Similarly to Jeutter, the Examiner finds that Chen “fails to teach that
the magnetic field is generated at least in part by the external transceiver”
(id. at 6).
The Examiner relies on Kung for teaching “it is known to use an
externally generated magnetic field in order to determine the position of an
implantable device in relation to the external device (e.g. column 19, lines
50 - 60)” (id. at 5; see also id. at 6). The Examiner thus concludes that it
would have been obvious to modify the generated magnetic field of Jeutter
or Chen “with a magnetic field generated at least in part by an external
device as taught by Kung, since such a modification would provide the
predictable results of allowing a physician or a technician to easily access
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the magnetic field generator and thus more easily perform maintenance on
the generator” (id. at 5; see also id. at 6).
Appellants argue that Jeutter discloses an internal receiver that
includes a ferrous magnet, and an external receiver that includes a
magnetically operated reed switch (App. Br. 7). As such, Appellants assert
that “Jeutter merely discloses that the external transmitter . . . detects the
presence of the internal magnet . . . .” (id.). Similarly, Appellants argue that
Chen “is directed to determining the alignment and position of an external
device relative to an internal device” (id. at 15). Appellants assert that “[t]o
ensure optimal coupling between the external and internal devices, two
permanent magnets are disposed at spaced-apart positions on the internal
receiver . . . . [, and t]he strength of the two internal permanent magnets is
sensed by sensors in the external unit” (id.). Thus, according to Appellants,
“Chen, like Jeutter, discloses detecting a magnetic field generated by an
internal magnet” (id.).
Appellants assert that Kung “is directed to an electromagnetic field
source . . . for providing electromagnetic energy to a secondary coil . . .
implanted in a recipient . . .” (id. at 9). Appellants note that Kung “discloses
a proximity detector . . . that can determine the approximate distance
between the primary coils and the secondary coil, and adjust the amount of
current to the primary coils,” but argue that “Kung discloses that the distance
between a primary coil and a secondary coil is measured by determining the
resonant frequency of the primary coil” (id. at 10-11). That is, according to
Appellants, “Kung does not teach measuring the strength of a magnetic field
generated at least in part by an external transceiver,” but instead “Kung
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discloses measuring a shift in the resonant frequency of a primary coil” (id.
at 11). As such, Appellants assert that Kung does not remedy the
deficiencies of Jeutter or Chen (id. at 11; see also id. at 15).
We agree with Appellants that the Examiner has not established by a
preponderance of the evidence that the combination of Jeutter or Chen with
Kung renders independent claim 1 obvious.
“Rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007).
The portion of Kung the Examiner relies upon teaches:
By thus measuring the proximity of each primary coil,
the closest primary coils are determined. Similarly, it may be
determined that a particular primary coil is the closest coil, but
that the resonance shift is less than would be expected if the
secondary coil were positioned at a nominal distance from the
middle of the coil. Such reduced shift may be due to the
secondary coil being between the measured primary coil and an
adjacent primary coil, or at an edge of the measured coil nearer
to the adjacent coil. Measurement of the frequency shift of the
adjacent primary coil may confirm this.

(Kung, col. 19, ll. 50-60.) The Examiner does not explain, however, how
measuring the frequency shift as taught by Kung is a teaching of or renders
obvious measuring a magnetic field. The Examiner’s rejections are thus too
cursory to pass the Kahn test, and we thus reverse them as to claim 1, as well
as the claims dependent thereon.
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As to independent claim 16, Appellants notes that the claim is drawn
to an “‘apparatus . . . comprising: means, for measuring the strength of a
magnetic field proximal to the external transceiver, wherein the magnetic
field is generated at least in part by the external transceiver’” (App. Br. 14;
see also id. at 16). Appellants assert that the Examiner relied on the same
reasoning as that used to reject claim 1, and thus the rejection should be
reversed as to that claim as well (id.). We agree, and reverse the rejections
as to claim 16 as well.
The Examiner rejects claim 58 as being rendered obvious by Chen
(Ans. 3). The Examiner finds that “Chen discloses an apparatus comprising
a means for measuring the strength of a magnetic field (e.g. column 4, lines
25 - 30)” (id.). The Examiner notes that Chen fails to teach that “the
measured strength must exceed the threshold value” (id. at 4). The
“Examiner has taken official notice that processors that determine a
difference between a desired value and a measured value are well known in
the art” (id.). The Examiner thus concludes:
In such a case, the difference is compared against a threshold to
determine if it is greater than a threshold value. It would have
been an obvious matter of design choice to a person of ordinary
skill in the art to modify the system as taught by Chen with a
system that indicates the transceiver has been displaced when
the measured strength of the magnetic field is greater than the
threshold value, because Applicant has not disclosed that
requiring the measured strength to be greater than the threshold
value provides an advantage, is used for a particular purpose, or
solves a stated problem.

(Id.)
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Appellants argue that claim 58 recites “‘means for indicating that the
external transceiver has been displaced when the measured strength of the
magnetic field proximal to the external transceiver is greater than the
threshold value’” (App. Br. 16). Appellants argue that the magnetic field of
Chen is generated by internal magnets, and when the magnets are separated
from the receiver, the magnetic field drops (id.). Thus, “Chen could only
detect that the internal and external units are separated if the magnetic field
fell below a threshold” (id. at 17). Appellants argue that as required by
claim 58, “[w]hen measuring the actual magnetic field between the
transmitter and receiver, the strength of the field proximal to the external
transceiver will increase (not decrease) as the external and internal units
become separated” (id. at 16). Appellants thus assert that the Examiner just
states that it is a matter of design choice without providing support.
We agree with Appellants’ arguments. That is, the Examiner’s
rejections are thus too cursory to pass the Kahn test, and we thus reverse the
rejection as to claim 58 as well.
The Examiner also rejects claims 8-10, 23-27, and 33 as being
rendered obvious by the combination of Chen and Kung as further combined
with Bornhoft (Ans. 6).
Appellants present no argument as to this rejection, we thus
summarily affirm it. See MANUAL OF PATENT EXAMINING PROCEDURE
§ 1205.02 (“If a ground of rejection stated by the examiner is not addressed
in the appellant’s brief, that ground of rejection will be summarily sustained
by the Board.”); see also, Ex parte Frye, 2010 WL 889747 *4 (Bd. Pat. App.
& Int. 2010) (precedential) (“If an appellant fails to present arguments on a
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particular issue—or, more broadly, on a particular rejection—the Board will
not, as a general matter, unilaterally review those uncontested aspects of the
rejection”).

SUMMARY
We reverse the rejections of:
Claim 58 under 35 U.S.C. § 103(a) as being rendered obvious by
Chen.
Claims 1-4, 11, 12, 16-19, 28, and 29 under 35 U.S.C. § 103(a) as
being rendered obvious by the combination of Jeutter and Kung.
Claims 1-7, 11-22, and 28-32 under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Chen and Kung.

We summarily affirm the rejection of:
Claims 8-10, 23-27, and 33 under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Chen and Kung as further combined
with Bornhoft.

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)(1)(iv)(2006).

AFFIRMED-IN-PART

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