Ex Parte Vetek et al

Patent Trial and Appeal Board

Oct 24, 2016

13370720 (P.T.A.B. Oct. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/370,720 02/10/2012
10948 7590 10/26/2016
Harrington & Smith, Attorneys At Law, LLC
4 Research Drive, Suite 202
Shelton, CT 06484
FIRST NAMED INVENTOR
Alrns Vetek
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.
800.0806.Ul(US) 6840
EXAMINER
WU, TONGE
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
10/26/2016 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):
USPTO@hspatent.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AKOS VETEK, JARI KANGAS, LEO KARKKAINEN,
TATIANA G. EVREINOVA, and GRIGORI E. EVREINOV
Appeal 2015-000135 1,2
Application 13/370,720
Technology Center 3700
Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and
BRUCE T. WIEDER, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
According to Appellants, the invention "relate to mechanisms for
transcutaneous stimulation of the optic nerve to produce visual responses."
1 Our decision references Appellants' Specification ("Spec.," filed Feb. 10,
2012) and Appeal Brief ("Br.," filed May 9, 2014), as well as the Final
Office Action ("Final Action," mailed Oct. 23, 2013) and the Examiner's
Answer ("Answer," mailed July 15, 2014).
2 According to Appellants, Nokia Corporation is the real party in interest.
Br. 2.
Appeal2015-000135
Application 13/370,720
Spec. i1 1. Claims 1, 8, and 15 are the only independent claims. See Br.,
Claims App. We reproduce claim 1, below, as representative of the
appealed claims.
Id.
1. An apparatus comprising:
at least one processor;
memory storing a program of instructions;
wherein the program of instructions is configured to, with
the at least one processor, cause the apparatus to perform actions
comprising at least:
generating user output data;
converting the user output data to representations
corresponding to light signals; and
performing control functions to at least two current
sources to cause generation of electrical outputs in the form of at
least a balanced differential signal which, when applied to the
skin of a user, stimulate an optic nerve of the user so as to cause
the user to perceive the light signals.
REJECTIONS AND PRIOR ART
The Examiner rejects claims 15-20 under 35 U.S.C. § 101 as directed
to non-statutory subject matter. The Examiner also rejects claims 1-20
under 35 U.S.C. § 103(a) as unpatentable over Beck (US 4,664,117, iss.
May 12, 1987) and Binder (US 6,684,107 Bl, iss. Jan. 27, 2004). See Final
Action 2--4; see also Answer 2.
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Appeal2015-000135
Application 13/370,720
ANALYSIS
Non-statutory subject matter rejection
In the Final Action, the Examiner indicates that the claims are rejected
because claim 15 "should recite a 'non-transitory' computer readable
medium." Subsequently, the Examiner entered such an amendment to
claim 15. See Advisory Action mailed Jan. 29, 2014 (Advisory Action), 1.
But, because the Examiner does not indicate withdrawal of the rejection, we
must review as though the Examiner maintains the rejection. See Answer 2.
As Appellants do not argue against the rejection, we summarily sustain the
rejection.
Obviousness rejection
Independent claim 1 recites, among other features,
performing control functions to at least two current sources to
cause generation of electrical outputs in the form of at least a
balanced differential signal which, when applied to the skin of a
user, stimulate an optic nerve of the user so as to cause the user
to perceive the iight signais.
Br., Claims App. Appellants argue the rejection is in error because it would
not have been obvious to modify Beck based on Binder. See Br. 4--11.
Based on our review of the prosecution history, we agree with Appellants,
and, thus, we do not sustain the obviousness rejection of claim 1.
More specifically, the Examiner determines the following:
Beck discloses substantially the same invention as claimed,
including generating user output data and converting the user
output data to representations corresponding to light signals
([A]bstract), and performing control functions to cause
generation of electrical outputs which, when applied to the skin
ofa user ([A]bstract; [c]ol. 4, lines 25[-]29; Figures 1, 9[-]16),
stimulate an optic nerve so as to cause the user to perceive the
light signals.
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Appeal2015-000135
Application 13/370,720
Further ... , Beck does not explicitly disclose using two
current sources to generate a balanced differential stimulation
signal. However, Binder teaches using two current sources to
generate a balanced differential stimulation signal ([ c ]ol. 4,
lines 43[-]58), in order to increase patient safety. Therefore, it
would have been obvious to one with ordinary skill in the art at
the time the invention was made to modify Beck as taught by
Binder to include using two current sources to generate a
balanced differential stimulation signal, in order to mcrease
patient safety.
Final Action 3--4. As further explained by the Examiner,
[the] Examiner is not suggesting the bodily incorporation of the
circuitry of Binder into the device of Beck. Rather, Binder
suggests the configuration of two current sources and a balanced
differential signal offers well-known advantages for electrical
signal generating circuitry within the field of stimulation of the
body. Thus, the combination of Beck and Binder simply
modifies the signal generating circuitry while retaining the
primary function Beck, which is transcutaneously stimulating the
optic nerve.
Advisory Action 2.
However, we agree with Appellants' characterization of Binder, viz.
that Binder "control[ s] maximum voltage and current levels to avoid
penetrating beneath the dermal layer of the skin." Br. 7; see also id. at 7-12.
Thus, we determine that the Examiner does not provide the required
reasoning with rational underpinnings sufficient to convince us that it would
have been obvious to modify Becks circuitry to stimulate an optic nerve
below the skin based on Binder's circuitry that is designed to stimulate only
the skin without providing stimulation to anything under the skin (see id.
at 7, referencing Binder col. 2, 11. 8-22) (see also KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007)).
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Appeal2015-000135
Application 13/370,720
Based on the foregoing, we do not sustain the obviousness rejection of
claim 1. Further, we do not sustain the obviousness rejection of independent
claims 8 and 15, each of which recites similar limitations. See Br., Claims
App. Still further, inasmuch as we do not sustain the obviousness rejection
of the independent claims, we also do not sustain the obviousness rejection
of claims 2-7, 9-14, and 16-20 that depend from the independent claims.
DECISION
We summarily AFFIRM the Examiner's rejection of claims 15-20
under 35 U.S.C. § 101.
We REVERSE the Examiner's rejection of claim 1-20 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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