Stefanie Lattner

Patent Trials and Appeals BoardNov 12, 2020

2020002599 (P.T.A.B. Nov. 12, 2020)

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. 13/978,298 07/03/2013 Stefanie Lattner LATT-1089707 1270 27111 7590 11/12/2020 GORDON & REES LLP 101 WEST BROADWAY SUITE 1600 SAN DIEGO, CA 92101 EXAMINER LOUIS, LATOYA M ART UNIT PAPER NUMBER 3785 NOTIFICATION DATE DELIVERY MODE 11/12/2020 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): ipdocket@gordonrees.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEFANIE LATTNER Appeal 2020-002599 Application 13/978,298 Technology Center 3700 Before JILL D. HILL, JEREMY M. PLENZLER, and CARL M. DEFRANCO, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1 and 4–19. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant does not identify any real party in interest in its Appeal Brief. Appeal 2020-002599 Application 13/978,298 2 CLAIMED SUBJECT MATTER The claims are directed to various treatment methods utilizing mechanical vibratory stimuli. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for treating a neurological disorder, the method comprising: mechanically stimulating a vestibulocochlear nerve of a patient, wherein the stimulation comprises a first mechanical vibratory stimulus for mechanically stimulating the auditory nerve bundle of the vestibulocochlear nerve and second mechanical vibratory stimulus for mechanically stimulating the vestibular nerve bundle of the vestibulocochlear nerve, wherein the mechanical vibratory stimuli vibrate at different frequencies and are applied by a vibrating mechanism in contact with the patient. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Guinta US 4,667,676 May 26, 1987 Yasushi US 5,241,967 Sept. 7, 1993 Karell US 6,430,443 B1 Aug. 6, 2002 De Ridder US 7,613,519 B2 Nov. 3, 2009 Fischell US 2003/0195588 A1 Oct. 16, 2003 REJECTIONS Claims 1 and 4–11 are rejected under 35 U.S.C. § 103(a) as being unpatentable Fischell, Guinta, and Karell. Claims 12 and 13 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Fischell, Guinta, Karell, and Yasushi. Claims 14, 15, and 19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over De Ridder and Guinta. Appeal 2020-002599 Application 13/978,298 3 Claim 16 is rejected under 35 U.S.C. § 103(a) as being unpatentable over De Ridder, Guinta, and Karell. Claims 17 and 18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over De Ridder, Guinta, and Fischell. OPINION Fischell Grounds – Claims 1 and 4–13 Independent claims 1, 12, and 13 each recite stimulation via “a first mechanical vibratory stimulus” and “a second mechanical vibratory stimulus” that is “applied by a vibrating mechanism in contact with the patient.” The Examiner finds that Fischell teaches “first and second mechanical vibratory stimulus ([0061] last 8 lines disclose applying auditory vibration and vibratory vibration stimulus in combination with a mechanism)” that are “applied by a vibrating mechanism in contact with the patient ([0018] lines 1-5).” Final Act. 2; see also id. at 5 (discussing rejection of claims 12 and 13). Appellant disputes these findings. Appeal Br. 9–10, 16–17. Paragraph 18 of Fischell discusses a magnetic coil being placed in the ear canal. The Examiner offers no explanation as to how this teaches the claim limitations noted above. Paragraph 61 of Fischell states that “[t]he various treatment modalities set forth above (electrical stimulation, magnetic stimulation, acoustic and vibratory signals, heating and cooling, etc.) can also be applied individually or in combination as desired.” Again, the Examiner provides no explanation regarding how this teaches the “mechanical vibratory stimulus” that is “applied by a vibrating mechanism in contact with the patient,” as required by the claims. Appeal 2020-002599 Application 13/978,298 4 In the Answer, the Examiner elaborates, citing paragraphs 9 and 10 of Fischell, making clear that the Examiner’s findings are based on auditory stimulus teaching the recited “mechanical vibratory stimulus” that is “applied by a vibrating mechanism in contact with the patient.” Ans. 9–10. The Examiner finds, for example, that “any auditory stimulus must also be vibratory in order to stimulate auditory receptors in a user’s ears,” but fails to provide sufficient evidence to support why one skilled in the art would have understood the recited “mechanical vibratory stimulus” to include “any auditory stimulus.” Appellant has the better position. As Appellant explains, [w]hile the auditory stimulus of Fischell might, in the abstract, be considered to have a “vibratory” character insofar as an auditory stimulus comprises sound waves that are themselves vibrations of air which stimulate the auditory receptors in a user's ears, the presently claimed invention is specifically directed to the use of mechanical vibration in which mechanical vibratory stimuli are applied by a vibrating mechanism that is in contact with the patient. Appeal Br. 9 (emphasis added); see also Reply Br. 4–5. Appellant’s contention that the recited “mechanical vibratory stimulus” is not the same as an auditory stimulus is consistent with Appellant’s Specification, which clearly and repeatedly distinguishes between the two types of stimulus. See, e.g., Spec. ¶ 8 (“the at least one stimulus is an auditory stimulus, a vibratory stimulus, or a combination thereof). That is, consistent with the claims, and Appellant’s Specification, a “mechanical vibratory stimulus” that is “applied by a vibrating mechanism in contact with the patient” is not simply an acoustic signal that vibrates the eardrum. For at least the reason set forth above, we do not sustain the Examiner’s decision to reject claims 1 and 4–13. Appeal 2020-002599 Application 13/978,298 5 De Ridder Grounds – Claims 14–19 Like independent claims 1, 12, and 13, independent claim 14 requires “a first mechanical vibratory stimulus” and “a second mechanical vibratory stimulus” that is “applied by a vibrating mechanism in contact with the patient.” For claim 14, the Examiner finds that De Ridder teaches these features. Final Act. 7 (citing De Ridder 3:20–30, 60–67). Appellant contends that “the only form of stimulation that De Ridder discloses is electrical stimulation delivered by means of a surgically implanted device.” Appeal Br. 18. The Examiner responds by citing column 1, lines 50–65 of De Ridder, asserting that this newly cited portion teaches the “mechanical vibratory stimulus” that is “applied by a vibrating mechanism in contact with the patient.” Ans. 12. Appellant responds that “[t]he [newly] cited passage of DeRidder . . . is a discussion of the background of the invention and does not support the Examiner’s assertion.” Reply Br. 15. After review of the portion of column 1 from De Ridder cited by the Examiner, and without meaningful explanation from the Examiner, we fail to see the alleged teaching. The Examiner does not propose any modification to the cited electrical stimulus embodiment of De Ridder, let alone provide rationale to modify that embodiment in a manner that would have resulted in mechanical vibratory stimulus. See Final Act. 7; Ans. 12. For at least the reasons set forth above, we do not sustain the Examiner’s decision to reject claims 14–19. CONCLUSION The Examiner’s rejections are reversed. Appeal 2020-002599 Application 13/978,298 6 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4–11 103(a) Fischell, Guinta, Karell 1, 4–11 12, 13 103(a) Fischell, Guinta, Karell, Yasushi 12, 13 14, 15, 19 103(a) De Ridder, Guinta 14, 15, 19 16 103(a) De Ridder, Guinta, Karell 16 17, 18 103(a) De Ridder, Guinta, Fischell 17, 18 Overall Outcome 1, 4–19 REVERSED