Ex Parte PATHAK

Patent Trial and Appeal BoardMar 28, 2019

13250000 (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/250,000 09/30/2011 AnupamPATHAK 136190 7590 04/01/2019 COJKNerily Life Sciences LLC 1201 Third Avenue Suite 3600 Seattle, WA 98101-3029 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 ATTORNEY DOCKET NO. CONFIRMATION NO. VRLS-1-58871 1866 EXAMINER HOBAN, MELISSA A ART UNIT PAPER NUMBER 3774 NOTIFICATION DATE DELIVERY MODE 04/01/2019 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@cojk.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANUP AM PATHAK 1 Appeal2018-001048 Application 13/250,000 Technology Center 3700 Before DANIEL S. SONG, CHARLES N. GREENHUT, and BRETT C. MARTIN, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134 from a rejection of claims 1- 11. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. 1 Appellant identifies the real party in interest as Verily Life Sciences LLC. App. Br. 1. Appeal2018-001048 Application 13/250,000 CLAIMED SUBJECT MATTER The claims are directed to a system and method for stabilizing unintentional muscle movements. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A system comprising: a housing having an exterior shape adapted to be held by a user's hand and having an interior volume, the interior volume having an open end; a subsystem positioned in the interior volume, the subsystem including a motion-generating mechanism, a controller coupled to the motion-generating mechanism, a control system coupled to the controller, and at least one relative- motion sensor coupled to the control system; and an attachment arm having a first end coupled to the motion-generating mechanism and a second end that extends through the open end of the housing and is configured to receive a user assistive device, wherein the attachment arm is movable relative to the housing, wherein the relative-motion sensor measures the position of the attachment arm relative to the housing, and wherein at least one absolute-motion sensor is placed along the attachment arm; wherein the control system uses outputs from the absolute- motion sensor and the relative-motion sensor to stabilize the position of the user-assistive device by directing the motion- generating mechanism to move the attachment arm relative to the housing to compensate for the user's tremors. REJECTIONS Claims 1--4 and 6-11 are rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Peer (US Patent No. 6,238,384 Bl, issued May 29, 2001). Claim 5 is rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Peer and Martin (US Patent No. 6,946,812 Bl, issued Sept. 20, 2005). 2 Appeal2018-001048 Application 13/250,000 OPINION With regard to the rejection of sole independent claim 1 based on Peer, the Examiner relies on Peer's motion sensor 2 as the recited "relative motion sensor." Final Act. 3 ( citing Peer col. 1, 1. 48). The Examiner points out that with regard to the sensors, Peer states: According to the invention, one or more devices can be provided for repetitive or continuous detection of the position of certain sections of the instrument in one, two or three dimensions, in particular of a handheld section and/ or a section of the instrument which is movable in relation to the handheld section. By repetitive or continuous detection of the position and orientation of certain sections of the instrument, their movement can be followed. Final Act. 3--4 ( citing Peer col. 1, 1. 63---col. 2, 1. 5). As Appellant correctly points out, "[t]he passage quoted above says only that the positions of different parts of Peer's device can be measured, but it is not a disclosure of any particular way of measuring them nor, in particular, a disclosure of any particular sensor type for measuring them." App. Br. 11. Peer's figures depict sensors 2 on the handheld section 1, which is interpreted by the Examiner as the recited "housing." Although, as quoted above, Peer states that position can be detected of a section "movable in relation to the handheld section," this does not necessarily mean that the sensor "measures the position of the attachment arm relative to" that section as required by claim 1 (emphasis added). App. Br. 12-13; see also Fig. 2, 220. Detecting the position of a first element that moves relative to a second element does not necessarily involve detecting the first element's position relative to the second element. Relying on a generic teaching such as this is 3 Appeal2018-001048 Application 13/250,000 not necessarily fatal to a rejection under Â§ 103. 2 However, where the prior art lacks a disclosure of a specific aspect of the claimed subject matter, it is incumbent upon the Examiner to provide some other evidence or well- reasoned explanation to account for the specific difference between the prior-art and the subject matter claimed. In this case, that has not been done, leaving this particular limitation essentially unaccounted for in the Examiner's rejections. 3 As all words in a claim must be considered in judging the obviousness of the claimed subject matter (In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970)) and the burden of proving unpatentability underÂ§ 103 is on the PTO (In re Warner, 379 F.2d 1011, 1016 (CCPA 1967)), the Examiner's rejection cannot be sustained on the basis set forth by the Examiner. DECISION The Examiner's rejections are reversed. REVERSED 2 The general rule is that the disclosure of a genus in the prior art is not necessarily a disclosure of every species that is a member of that genus. See, e.g., In re Baird, 16 F.3d 380, 382 (Fed. Cir.1994) 3 Martin, although relied upon to demonstrate relative and absolute sensors are both known in the art, is not relied upon by the Examiner to cure this specific deficiency. Final Act. 6. 4