Ex Parte Luetke-Wenning

Patent Trial and Appeal BoardNov 30, 2012

11505015 (P.T.A.B. Nov. 30, 2012)

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. 11/505,015 08/16/2006 Juergen Luetke-Wenning 3816 4789 7590 11/30/2012 STRIKER, STRIKER & STENBY 103 EAST NECK ROAD HUNTINGTON, NY 11743 EXAMINER YU, JUSTINE ROMANG ART UNIT PAPER NUMBER 3771 MAIL DATE DELIVERY MODE 11/30/2012 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 JUERGEN LUETKE-WENNING ____________ Appeal 2010-005410 Application 11/505,015 Technology Center 3700 ____________ Before STEFAN STAICOVICI, GAY ANN SPAHN, and MICHAEL C. ASTORINO, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 3, 4, 6-13, and 15. Claims 1, 2, 5, and 14 have been cancelled. Br. 2. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. Appeal 2010-005410 Application 11/505,015 2 REJECTIONS At the outset, we acknowledge that the Appellant’s “First Ground to be Reviewed on Appeal” (Br. 10) concerns the specification and claims, and “Second Ground to be Reviewed on Appeal” (Br. 11) concerns an objection to the drawings. However, we agree with the Examiner that the above are petitionable matters and are not properly addressed by the Board. Ans. 2. See 37 C.F.R. § 1.181; 37 C.F.R. § 1.127; In re Mindick, 371 F.2d 892, 894 (CCPA 1967)); In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971)); and Manual of Patent Examining Procedure (“MPEP”) §§ 1002, 1002.02(c). The following Examiner’s rejections are before us for review: claims 3, 6, 7, 9-12, and 15 rejected under 35 U.S.C. § 103(a) as unpatentable over Johnson (US 6,620,117 B1, iss. Sept. 16, 2003) and Rapoza (US 3,605,732, iss. Sept. 20, 1971); claims 3 and 4 rejected under 35 U.S.C. § 103(a) as unpatentable over Johnson, Rapoza, and der Meer (US 2005/0131319 A1, publ. Jun. 16, 2005); claim 8 rejected under 35 U.S.C. § 103(a) as unpatentable over Johnson, Rapoza, and Prince (US 3,765,407, iss. Oct. 16, 1973); and claim 13 rejected under 35 U.S.C. § 103(a) as unpatentable over Johnson, Rapoza, and Gianutsos (US 6,106,491, iss. Aug. 22, 2000). CLAIMED SUBJECT MATTER Claim 15 is the sole independent claim on appeal, is representative of the subject matter on appeal, and is reproduced below. Appeal 2010-005410 Application 11/505,015 3 15. A device for stimulating a skeleton in a body, comprising a vibrating platform which is supported vibratingly in an at least horizontal plane, and all points of said platform describe a closed orbital path selected from the group consisting of a circular path and an elliptic path, and means for driving said vibrating platform, said means for driving said vibrating platform being configured so that an orbital direction of said closed orbital path is counter to a rotation of Earth. OPINION The Examiner finds that Johnson teaches a “vibrating platform being configured so that an orbital direction of said closed orbital path is counter to a rotation of Earth.” Ans. 4. Alternatively, pointing to column 3, lines 20- 22 of Rapoza, the Examiner finds that Rapoza discloses a platform “that is actually capable of countering the rotation of the Earth” and concludes that “it would have been obvious . . . to modify the driving means of Johnson so that the driving means can actuate the platform about a horizontal axis as taught by Rapoza to counter the rotation of the Earth.” Ans. 4-5. The Appellant asserts that neither Johnson nor Rapoza discloses the motion of a closed orbital path to be “counter to the rotational direction of the Earth,” as recited in claim 15 (Br. 13), and contends that the Examiner’s proposed combination of references would never lead to the device as recited in claim 15 (Br. 14). The Appellants contention is persuasive for the following reasons. Although we agree with the Examiner that “Johnson discloses a device (10) for stimulating a skeleton in a body (see figs. 1 and 2) comprising a vibrating platform (14) which is supported vibratingly in an at least horizontal plane (see abstract)” and a “means for driving (48) the vibrating platform in a closed orbital path (see horizontal orbital oscillation, Appeal 2010-005410 Application 11/505,015 4 col. 6 lines 27-41 and 60-65)” (Ans. 3), we do not agree that the horizontal orbital path of Johnson’s plate 14, as described in the embodiment of Figures 1 and 2, is necessarily “counter to the rotational direction of the Earth.” See Johnson, col. 4, ll. 1-4. Contra Ans. 4, 8-9. Despite the fact that Johnson’s plate 14 must rotate in some direction, it is not clear that this direction is “counter to the rotational direction of the Earth,” as called for by independent claim 15. Turning to the Examiner’s alternative finding concerning Rapoza, we agree with the Appellant’s assertion that “[t]he movement of the platform (14) takes place in a vertical plane and not in a horizontal plane.” Br. 13. Put simply, in contrast to Johnson’s horizontal orbital path, which rotates in a plane perpendicular with the Earth’s axis of rotation, Rapoza discloses a rotating path in a plane parallel to the Earth’s axis of rotation. See Rapoza fig. 1, col. 3, ll. 67-73. Accordingly, Rapoza does not disclose a horizontal orbital path rotating in either a clockwise or counterclockwise direction, as the Examiner proposes. Since the Examiner relied on unsupported factual findings for the proposed rejection, we cannot sustain the Examiner’s rejection of claim 15, and its dependent claims 3, 6, 7, and 9-12, as unpatentable over Johnson and Rapoza. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988). The remaining rejections based on Johnson and Rapoza in combination with der Meer, Prince, or Gianutsos lack additional findings or reasoning to remedy the unsupported factual findings discussed supra. As such, for the same reasons as provided above, we cannot sustain the rejections of: claims 3 and 4 as unpatentable over Johnson, Rapoza, and der Meer; claim 8 as unpatentable over Johnson, Rapoza, and Prince; and claim 13 as unpatentable over Johnson, Rapoza, and Gianutsos. Appeal 2010-005410 Application 11/505,015 5 DECISION We REVERSE the rejections of claims 3, 4, 6-13, and 15. REVERSED Klh