Ex Parte Tass et al

Patent Trial and Appeal Board

Oct 5, 2017

14444317 (P.T.A.B. Oct. 5, 2017)

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.
14/444,317 07/28/2014 Peter A. Tass 036594.00017 2882
38485 7590
ARENT FOX LLP
1675 BROADWAY
NEW YORK, NY 10019
EXAMINER
MALAMUD, DEBORAH LESLIE
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
10/10/2017 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):
patentdocket @ arentfox. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER A. TASS, URBAN SCHNELL, JEAN-CHRISTOPHE
ROULET, OLEKSANDR POPOVYCH, JOEL NIEDERHAUSER,
HANS-JOACHIM FREUND, and BIRGIT U. BARNIKOL1
Appeal 2016-008127
Application 14/444,317
Technology Center 3700
Before ERIC B. GRIMES, RICHARD J. SMITH, and RYAN H. FLAX,
Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to a device and method for desynchronizing a patient’s
neuronal brain activity. Claims 1—4, 6—14, and 16—20 are on appeal as
rejected under 35 U.S.C. § 102. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
1 Appellants identify the Real Parties in Interest as “Universitaet Zu Koeln”
and “Forschungszentrum Juelich GmbH.” Appeal Br. 2.
Appeal 2016-008127
Application 14/444,317
STATEMENT OF THE CASE
The Specification describes,
a device and method for desynchronizing a patient’s
neuronal brain activity involving a neuron population firing in a
pathologically synchronized manner. The device includes a
stimulation unit configured to generate an acoustic stimulation
signal to stimulate the neuron population when the acoustic
stimulation signal is aurally received by the patient.
Furthermore, the acoustic stimulation signal has a first frequency
and a second frequency, with the first frequency provided to reset
the phase of the neuronal brain activity in a first sub-population
of the stimulated neuron population, and the second frequency
provided to reset the phase of the neuronal brain activity in a
second sub-population of the stimulated neuron population.
Spec. 13. The Specification further states,
The device 100 can be used in particular for treating
neurological or psychiatric diseases, such as tinnitus, migraine,
headaches of different form and genesis (e.g. cluster headache),
trigeminal neuralgia, sleep disorders, neuralgias and headaches
in the case of neuroborreliosis, attention deficit syndrome
(ADS), attention deficit hyperactivity syndrome (ADHS),
neuroses, compulsion neuroses, depressions, mania,
schizophrenia, tumors, arrhythmias, addiction diseases, bruxism
(nocturnal teeth grinding), eating disorders, and the like.
Id. 118.
Claims 1 and 11 are independent claims; claim 1 is representative and
is reproduced below:
1. A device for desynchronizing a patient’s neuronal brain
activity involving a neuron population firing in a pathologically
synchronized manner, the device comprising:
a stimulation unit configured to generate an acoustic
stimulation signal comprising at least a first tone and a second
tone;
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Application 14/444,317
wherein the first tone comprises a first frequency or first
frequency mixture in a first frequency range and is configured to
shift the phase of the neuronal brain activity of a first
subpopulation of the neuron population relative to the phase of
the neuronal brain activity of a second subpopulation of the
neuron population when the first tone is acoustically received by
the patient;
wherein the second tone comprises a second frequency or
second frequency mixture in a second frequency range different
than the first frequency range and is configured to shift the phase
of the neuronal brain activity of the second subpopulation
relative to the phase of the neuronal brain activity of the first
subpopulation when the second tone is acoustically received by
the patient; and
wherein the acoustic stimulation signal desynchronizes the
neuron population of the patient when the acoustic stimulation
signal is acoustically received by the patient.
App. Br. 14 (Claims App’x).
The following rejection is on appeal:
Claims 1—4, 6—14, and 16—20 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Tass.2
DISCUSSION
A patent claim is invalid for anticipation under 35 U.S.C. § 102 when
a prior art reference describes “each and every claim limitation and enable[s]
one of skill in the art to practice an embodiment of the claimed invention
without undue experimentation.” ClearValue, Inc. v. Pearl River Polymers,
Inc., 668 F.3d 1340, 1344 (Fed. Cir. 2012) (quoting Am. Calcar, Inc. v. Am.
2 US 2006/0047324 A1 (published Mar. 2, 2006), now US 8,543,219 B2
(issued Sept. 24, 2013) (“Tass”).
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Application 14/444,317
Honda Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 2011)). “[Apparatus
claims cover what a device is, not what a device does.'” Hewlett-Packard
Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990).
However, “we must give effect to all claim limitations.” In re Angstadt, 537
F.2d 498, 501 (CCPA 1976) (emphasis in original). And, use of “configured
to” in claim language can denote structure in the context of an electronic
circuit or programming. In re Lowry, 32 F.3d 1579, 1583—84 (Fed. Cir.
1994) (claim limitations regarding organization of data in memory held to
distinguish over prior art); In re Noll, 545 F.2d 141, 148 (CCPA 1976)
(“[T]he claimed invention . . . comprises physical structure, including
storage devices and electrical components uniquely configured to perform
specified functions through the physical properties of electrical circuits to
achieve controlled results. Appellant’s programmed machine is structurally
different from a machine without that program.”).
The Examiner determined that claim 1 is anticipated by Tass. The
Examiner identified the stimulator and acoustic stimulation signal disclosed
by Tass at paragraphs 19-21 and 34 and illustrated at figures 1, 2, 3a, and 3b
as satisfying the elements of claim 1. Final Action 4—5. In making this
determination, the Examiner interpreted claim 1 such that the “wherein”
clauses of the claim (i.e., all clauses after the first, which recite the various
frequencies of the acoustic signal produced by the stimulation unit) were
given no patentable weight. Ans. 6.
Appellants argue “Tass . . . does not disclose or suggest the feature of
generating an acoustic stimulation signal that includes both a first tone and a
second tone (in separate frequency ranges), as recited by independent claims
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Application 14/444,317
1 and 11.” Appeal Br. 7. Appellants argue that the tones disclosed by Tass
are tones of a single frequency (although, Appellants concede Tass
contemplates varying frequency) and cannot satisfy the claim element
requiring a stimulation unit configured to generate tones of different
frequencies (that affect respective subpopulations of neurons). Id. at 7—11.
Further, Appellants take issue with the Examiner’s claim interpretation,
arguing the “wherein” clauses of claim 1 define components (i.e., structure)
of the invention of claim 1 (and the similar limitations define steps of the
method of claim 11) and cannot be disregarded in analyzing patentability.
Id. at 10—11.
On the record before us, in view of the above-cited precedent, we find
Appellants’ arguments persuasive. First, we find the “wherein” clauses of
claim 1 recite structural limitations and should be considered in analyzing
patentability. The Examiner has not shown that Tass discloses the first and
second frequencies that the claimed stimulation unit is configured to produce
and has not shown how any tones/frequencies produced by the stimulator of
Tass can shift the phase of two subpopulations of neurons relative to one
another.
Tass discloses a first frequency supplied in a periodic pattern (a
frequency of pulses) to synchronize brain function, followed by a
desynchronizing pulse. Tass 121. Tass discloses that, thereafter, a different
frequency (periodic pattern of pulses) is supplied so the patient can
“accomplish his goals, for example, the detection of special patterns in an
on-going manner.” Id. The frequencies discussed by Tass do not refer to
the tone or pitch of an acoustic signal, but refer to the period (similar to
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strobing) of signal patterns. Therefore, we find Tass does not anticipate
claim 1 (or claim 11). Because the independent claims are not anticipated
by Tass, neither are the dependent claims.
SUMMARY
The rejection under 35 U.S.C. § 102(b) over Tass is reversed.
REVERSED
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