Ex Parte Walter et al

Patent Trial and Appeal Board

Mar 30, 2016

12438267 (P.T.A.B. Mar. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/438,267 0212012009 Timothy J. Walter
68242 7590 04/01/2016
FIALA & WEA VER P.L.L.C.
C/O CPA GLOBAL
P.O. BOX 52050
MINNEAPOLIS, MN 55402
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.
366.00050101 4235
EXAMINER
LOUIS,LATOYAM
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
04/01/2016 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):
DOCKETING@CPAGLOBAL.COM
docketing@fwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY J. WALTER and UMA MARAR
Appeal2013-010943
Application 12/438,267
Technology Center 3700
Before EDWARD A. BROWN, LEE L. STEPINA, and
FREDERICK C. LANEY, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
Timothy J. Walter and Uma Marar (Appellants)1 appeal under 35
U.S.C. § 134(a) from the Examiner's final rejection of claims 1, 5-9, 11-14,
and 17-28, which are the pending claims. Br. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The disclosure relates "generally to systems, devices, and methods for
treating restless leg syndrome and periodic limb movement disorder." Spec.
1 The Appeal Brief identifies Lotus Magnus, LLC. as the real party in
interest. Br. 3.
Appeal2013-010943
Application 12/438,267
1, 11. 6-7. Claims 1 and 9 are independent. Claim 1 illustrates the claimed
subject matter on appeal:
1. A system for treating restless leg syndrome and periodic
limb movement disorder, the system comprising:
sleeve apparatus to surround a portion of a subject;
vibration apparatus coupled to the sleeve to vibrate the
sleeve; and
electroencephalography apparatus configured to monitor
neural activity of the subject to determine if the subject is about
to move his/her legs and preemptively operate the vibration
apparatus.
REJECTIONS
The appealed claims stand rejected as follows:
1. Claims 1, 5, 6, 9, 11-14, and 17-28 under 35 U.S.C. § 103(a) as
unpatentable over Burbank (US 2009/0221943 Al, published Sept. 3, 2009)
and Karell (US 5,759,198, issued June 2, 1998).
2. Claim 7 under 35 U.S.C. § 103(a) as unpatentable over
Burbank; Karell; and Branch (US 2007/0255187 Al; published Nov. 1;
2007).
3. Claim 8 under 35 U.S.C. § 103(a) as unpatentable over
Burbank, Karell, and Bastia (US 2003/0028132 Al, published Feb. 6, 2003).
4. Claims 1, 5-7, 9, 11-14, and 17-28 under 35 U.S.C. § 103(a) as
unpatentable over Branch as evidenced by Aikman (US 2008/0222813 A 1,
published Sept. 18, 2008), and Karell. 2
5. Claim 8 under 35 U.S.C. § 103(a) as unpatentable over Branch
as evidenced by Aikman, Karell, and Bastia.
2 The heading of this rejection is corrected in the Examiner's Answer to list
claims 11-14 (see Ans. 6), which are not listed in the heading in the Final
Action (see Final Act. 5).
2
Appeal2013-010943
Application 12/438,267
ANALYSIS
Obviousness over Burbank and Karell-Claims 1, 5, 6, 9, 11-14, and 17-28
Claims 1, 5, and 6
Appellants argue the patentability of claims 1, 5, and 6 together as a
group. Br. 7-12. We select claim 1 as representative, and claims 5 and 6
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner found that Burbank discloses sleeve apparatus 452,
vibration apparatus 270, and a sensor to sense a body condition of a patient
that is indicative of a restless leg syndrome (RLS) incident. Final Act. 2-3
(citing Burbank i-fi-f 180, 196, 204). The Examiner found that Burbank does
not disclose an electroencephalography (EEG) apparatus, as claimed. Id. at
3. The Examiner relied on Karell for disclosing an EEG apparatus 82, 83
having the claimed features, and concluded that it would have been obvious
to combine Karell's EEG sensor with Burbank's system "to provide accurate
monitoring and enhanced treatment of the symptoms of RLS." Id. (citing
Karell, col. 2, 11. 35-50, col. 3, 11. 10-14).
Karell discloses a method and apparatus for treating and preventing
leg cramps and sleep disorders. Karell describes operation of the invention
as follows:
Theory of operation: [(ml) and (m2) are physiologically
opposing muscles] a muscle which causes night leg cramps, for
example the gastrocnemus calf muscle(ml) at the back of the leg,
is monitored. As this muscle begins to cramp, the monitoring
device records and sends data to a microprocessor under the
control of a rule-based program, which reacts at predetermined
points. On proper recognition that an inappropriate muscle( ml)
contraction is about to occur, a stimulating signal is then sent to
the physiologically opposing muscle(m2). This stimulus causes
increased tone or a contraction of the opposing muscle(m2). The
3
Appeal2013-010943
Application 12/438,267
body-mind is tricked into thinking a volitional movement is
requested and a relaxing signal is sent through the nervous
system to the physiologically opposing muscle( ml). Thus, the
cramping muscle(ml) is relaxed, thereby preventing or stopping
the cramp. Monitoring and pulsing occur without sleep arousal,
and the subject is never aware of a cramp being aborted.
Karell, col. 2, 11. 33-50 (emphases added).
Appellants contend that Karell does not teach or suggest an EEG
apparatus configured to monitor neural activity of a patient to determine if
the patient is about to move its legs. Br. 8. Rather, Appellants contend that
this disclosure in Karell "teaches monitoring muscles to determine when the
muscles have started cramping (see, e.g., the description of muscle
monitoring that begins: 'As this muscle begins to cramp .... ')[,]"and does
not teach or suggest "a system that makes a determination that a patient is
about to move his legs as recited in claim 1." Br. 9 (italics added).
According to Appellants, Karell' s system "makes a determination that
cramping occurs only after the muscles have started to cramp." Id.
Appellants also contend that the portions of Karell cited by the Examiner do
not teach or suggest "a system that functions to 'preemptively operate the
treatment apparatus,"' as claimed. Id. at 8. Appellants assert that Karell' s
"system is configured to detect muscle cramping when a 'muscle begins to
cramp' - not before it cramps," and "once a muscle begins to cramp, a
system provided to treat cramping cannot 'preemptively operate' to treat that
cramping because the muscle has already begun to cramp." Id. at 11.
Appellants' contentions are not persuasive. Even if we were to
accept, arguendo, Appellants' contention that Karell's system makes the
determination that a patient is about to move his legs only after the muscles
have started cramping, we construe the claim limitation, "if the subject is
4
Appeal2013-010943
Application 12/438,267
about to move his/her legs," not to preclude the subject from having
previously experienced cramping or moved his/her legs.
Further, we agree with the Examiner that Karell meets the disputed
claim limitation. Appellants acknowledge that Karell discloses sending a
stimulating signal to the physiologically opposing muscle (m2) when there is
a proper recognition that "an inappropriate muscle(m l) contraction is about
to occur." Br. 11; see Karell, col. 2, 11. 39--42 (emphasis added). That is, the
muscle contraction has not yet occurred. Appellants additionally
acknowledge Karell' s explanation that "the cramping muscle( ml) is relaxed,
thereby preventing or stopping the cramp." Br. 12, see Karell, col. 2, 11. 47-
49 (emphasis added). Accordingly, Karell discloses preventing a cramp that
is about to occur by sending the stimulating signal to muscle (m2). As a
result, the cramp does not occur in muscle (ml). Movement of the leg that is
about to occur, as a consequence of the cramp, would be prevented as well.
Appellants further acknowledge that Karell teaches a device that
monitors brain waves. Br. 9 (citing Karell, col. 3, 11. 10-14). However,
Appellants contend that this passage in Karell provides no specific guidance
about how or why the information obtained from monitoring the brain waves
might be used in Karell's systems and methods. Id. at 10.
However, Karell does provide specific guidance relating to
monitoring brain activity and use of the information obtained by the
monitoring. Specifically, the Examiner finds that Figure 3 of Karell teaches
an EX-Cramp monitoring device, which can be an EEG apparatus, to
monitor neural activity. Ans. 9. Karell describes how this brain wave
monitoring is used for cramp and sleep disorder relief. Karell, col. 4, 11. 38-
49. As shown in Figure 3, electrodes 82, 83 are placed around a subject's
5
Appeal2013-010943
Application 12/438,267
head, and sensing signals travel to monitoring means 12 and eventually
reach "stimulating(22) electrodes as above detailed." Id. Stimulating
electrodes 22 are provided on stocking-like positioning means 20 placed on
the subject's leg. Id. at col. 3, 11. 39--46.
Karell describes the methodology used in brain wave monitoring for
cramp and sleep disorder relief. For example, Karell provides "[a] method
for relieving a sleep disorder having muscle contractions by electrically
stimulating a physiologically opposing muscle by monitoring brain activity
and stimulating muscles." Karell, col. 6, 11. 66-col. 8, 1. 13. The method
comprises "placing electrodes onto a subject's head for monitoring brain
activation involved in muscle movement of a sleep disorder" and
"monitoring brain activation and comparing parameters monitored to
predetermined parameters, and sending a stimulus to an expected
physiologically opposing muscle(s) to the monitored brain activation
involved in muscle movement of the sleep disorder thereby relieving or
preventing an inappropriate movement within the sleep disorder." Id.
(emphasis added). As such, Karell suggests a reason for monitoring brain
activation that is involved in muscle movement of a sleep disorder,
comparing the monitored brain activation parameters to predetermined
parameters, and sending the stimulus to prevent an inappropriate movement
within the sleep disorder. As discussed above in relation to Figure 3, the
stimulating electrodes are placed on a subject's legs. Accordingly,
performance of Karell' s method would prevent an inappropriate movement
of the subject's legs from occurring.
In view of the above, the Examiner's findings with respect to Karell
are supported by a preponderance of the evidence. Appellants have not
6
Appeal2013-010943
Application 12/438,267
apprised us of any error in the Examiner's reasoning in support of the
rejection of claim 1. Accordingly, we sustain the rejection of claim 1, and
claims 5 and 6, as unpatentable over Burbank and Karell.
Claims 9, 11-14, and 17-28
Appellants argue the patentability of claims 9, 11-14, and 17-28
together as a group. Br. 12-17. We select claim 9 as representative; claims
11-14 and 17-28 stand or fall with claim 9.
Claim 9 recites a method for treating restless leg syndrome and
periodic limb movement disorder, comprising, in part, "monitoring neural
activity of the subject's brain to determine if the subject is about to move
his/her legs," and "preemptively vibrating the sleeve with the vibration
apparatus before the subject consciously moves his/her legs and/or before
the subject becomes aware of the sensations to move his/her legs." Br.
(Claims App., emphasis added).
In rejecting claim 9; the Examiner relies on the same findings and
reasoning provided for claim 1. Final Act. 2-3. Appellants contend that
Karell does not teach or suggest preemptive operation "before the subject
consciously moves his/her legs and/or before the subject becomes aware of
the sensations to move his/her legs." Br. 13 (emphasis omitted). In support,
Appellants present contentions substantially similar to those presented for
claim 1. Id. at 13-17.
Appellants' contentions for claim 9 are not persuasive. First, we note
that, as recited in claim 9, if it is not determined that the subject is about to
move his/her legs, then there is no limitation requiring the final step of
"preemptively vibrating the sleeve" to be performed. Accordingly, we
7
Appeal2013-010943
Application 12/438,267
construe claim 9 to not require performance of the final step of the method
unless the "if' condition of the preceding step is satisfied.
Second, for reasons similar to those discussed above in relation to
claim 1, Appellants' contentions do not apprise us of any error in the
Examiner's finding that Karell teaches the claimed steps of "monitoring"
and "preemptively vibrating the sleeve with the vibration apparatus before
the subject consciously moves his/her legs," and/or "before the subject
becomes aware of the sensations to move his/her legs." We note the
conjunction "and/or" does not require "preemptively vibrating the sleeve"
according to both of these limitations. Appellants also do not apprise us of
any error in the Examiner's reasoning for combining the teachings of
Burbank and Karell. Thus, we sustain the rejection of claims 9, 11-14, and
17-28, as unpatentable over Burbank and Karell.
Obviousness over Burbank, Karell, and Branch - Claim 7
Appellants rely on claim 7 depending ultimately from claim 1 for
patentability. Br. 18. As Appellants do not apprise us of any deficiency in
the rejection of claim 1, we sustain the rejection of claim 7 as unpatentable
over Burbank, Karell, and Branch for the same reasons as those discussed
above for claim 1.
Obviousness over Burbank, Karell, and Bastia - Claim 83
Appellants rely solely on claim 8 depending ultimately from claim 1
for patentability. Br. 19. As Appellants do not apprise us of any deficiency
3 Appellants note correctly that claim 8 depends from claim 7, but claim 8 is
not indicated to be rejected over Burbank, Karell, Bastia, and Branch. Br.
19. However, the Examiner discusses Branch in the statement of the
rejection of claim 8. Final Act. 5. Consequently, the Examiner's omission
8
Appeal2013-010943
Application 12/438,267
in the rejection of claim 1, we sustain the rejection of claim 8 as
unpatentable over Burbank, Karell, Bastia, and Branch for the same reasons
as those discussed above for claim 1.
Obviousness over Branch as evidenced by Aikman, and Karell -
Claims 1, 5-7, 9, 11-14, and 17-28
Appellants argue the patentability of claims 1 and 5-7 together as a
group (Br. 21-24), and also argue the patentability of claims 9 and 17-28
together as another group. Id. at 25-29. Appellants make no separate
argument for patentability of claims 11-14. Accordingly, we select claims 1
and 9 as representative, and claims 5-7 stand or fall with claim 1, and claims
11-14, and 17-28 stand or fall with claim 9.
For claims 1 and 9, Appellants present substantially the same
arguments as those discussed above in relation to the rejection of claims 1
and 9 over Burbank and Karell. Accordingly, we sustain the rejection of
claims 1, 5-7, 9, 11-14, and 17-28 for substantially the same reasons as
those discussed above.
Obviousness over Branch as evidenced by Aikman, Karell, and Bastia-
Claim 8
Appellants rely solely on claim 8 depending ultimately from claim 1
for patentability. Br. 29-30. As Appellants do not apprise us of any
deficiency in the rejection of claim 1 over Branch as evidenced by Aikman
and Karell, we sustain the rejection of claim 8 as unpatentable over Branch
of Branch in the heading of the rejection of claim 8 was inadvertent, and we
treat the rejection as being also based on Branch.
9
Appeal2013-010943
Application 12/438,267
as evidenced by Aikman, Karell, and Bastia for the same reasons as those
discussed above for claim 1.
DECISION
The Examiner's decision to reject claims 1, 5-9, 11-14, and 17-28 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
10