In Re Joseph GIUFFRIDA , 527 F. App'x 981 ( 2013 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: JOSEPH GIUFFRIDA
______________________
2012-1692
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in serial No.
11/432,583.
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Decided: July 18, 2013
______________________
BRIAN M. KOLKOWSKI, Great Lakes Neuro Technolo-
gies Inc., of Cleveland, Ohio, for appellant. With him on
the brief was MARK PENNINGTON.
NATHAN K. KELLEY, Deputy Solicitor, Office of the So-
licitor, United States Patent and Trademark Office, of
Alexandria, Virginia, for appellee. With him on the brief
were FARHEENA Y. RASHEED and STACY B. MARGOLIES,
Associate Solicitors.
______________________
Before LOURIE, PLAGER, and TARANTO, Circuit Judges.
PER CURIAM.
This is an appeal from a decision of the Board of Pa-
tent Appeals and Interferences (now the Patent Trial and
Appeal Board) that sustained the Examiner’s final rejec-
2 IN RE: JOSEPH GIUFFRIDA
tion of certain claims in a patent application as not pa-
tentable over several prior-art references. The applicant
appeals (1) the rejection of four claims, a rejection that
stands or falls on one piece of prior art (Shields), and (2)
the obviousness rejection of five other claims. Concluding
that the Board erred on the first issue and erred in part
on the second, we affirm in part and reverse in part.
BACKGROUND
Joseph Giuffrida filed Patent Application No.
11/432,583, entitled “Movement Disorder Recovery Sys-
tem and Method,” in May 2006. The application describes
a rehabilitation system for improving motor recovery in
patients who suffer from movement disorders that result
from, for example, stroke or cerebral palsy. A286. Like
prior treatment methods, the system targets affected
muscles through repetitive motor activity and a technique
known as functional electrical stimulation (FES). A287-
88. Unlike prior methods using those techniques, which
involved “long stays in a treatment center,” Giuffrida’s
invention seeks to allow patients to continue their thera-
py independently, outside treatment centers and without
a therapist. A288.
The “portable” nature of the invention is important to
that goal and is expressed throughout the application.
Every claim begins by reciting a “portable therapy sys-
tem.” A280-85. The specification, moreover, states that
one objective of the invention is “to provide a portable
system which the individual can carry with themselves so
they might be treated at home, on vacation or while away
from home on business.” A288. It later explains that
“[b]y portable it is meant among other things that the
device is capable of being transported relatively easily.”
That “means that the therapy device is easily worn and
carried, generally in a carrying case,” and “should be
relatively light-weight.” A295-96.
IN RE: JOSEPH GIUFFRIDA 3
The application also describes many details of the
claimed system and its technology. Figure 4 depicts the
“device as applied to a subject”:
A294, 327. As shown, there is a device—preferably a
video display—for providing instructions like tasks or
exercises to perform. E.g., A309-10. The system includes
sensors for measuring body motion and/or muscle activity,
and it may also include an apparatus that provides FES
to the patient’s muscles. A289-94. The various devices
may communicate with one another wirelessly, over a
two-way radio frequency (RF) link. E.g., A306-09. And
the application sets forth some specifics about the circuit-
ry of its electronic components. E.g., A297-304.
The application contains three independent claims.
Independent claim 1 recites:
A portable therapy system for rehabilitation of a
subject’s movement disorder comprising
a sensor for measuring a subject’s voluntary mus-
cle activity having a signal related to the mus-
cle’s electrical activity; and
a device for providing a video, audio, written or
verbal stimulus to the subject to respond to
wherein the subject’s ability to respond to the
stimulus is calculated based in part on the signal
4 IN RE: JOSEPH GIUFFRIDA
for measuring the subject’s electrical muscle ac-
tivity.
A280. Independent claim 15 includes an additional
sensor for measuring “external body motion,” and inde-
pendent claim 21 recites a system with two sensors as
well as a microprocessor. Claims 2 and 16 depend from
claims 1 and 15, respectively, and add a “device worn by
the subject to provide FES.” A280-86. Claims 7 and 20
specify that one sensor is a gyroscope. Claims 23-27,
which depend from claim 21, add limitations related to
the electronic components and circuitry. Id.
In April 2009, the Examiner rejected all of the pend-
ing claims as anticipated or rendered obvious by several
prior-art references. Giuffrida appealed to the Board,
which reversed the rejection of claim 22 but sustained the
rejections of the remaining claims. Ex parte Giuffrida,
No. 2010-004633 (B.P.A.I. June 21, 2012). Giuffrida
appeals the rejections of claims 2, 7, 16, 20, and 23-27 to
this court. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
DISCUSSION
Giuffrida presents two issues for review: (1) whether
the Board erred in its application of the single piece of
prior art on which its rejections of claims 2, 7, 16, and 20
turned; and (2) whether the Board erred in its obvious-
ness rejections of claims 23-27.
A
The Board relied for four rejections on U.S. Patent
Application Publication No. US 2005/0209049 A1
(“Shields”). Specifically, the Board found that Shields
anticipates claims 2 and 16 and then used that anticipa-
tion finding as the premise for an obviousness rejection of
claims 7 and 20. Ex parte Giuffrida, at 11-15. The Direc-
tor does not challenge Giuffrida’s contention that the
obviousness rejections of claims 7 and 20 fall if the antici-
pation rejections of claims 2 and 16 fall. We conclude that
IN RE: JOSEPH GIUFFRIDA 5
the Board lacked substantial evidence to find that Shields
anticipates claims 2 and 16 and thus reverse the rejec-
tions of claims 2, 7, 16, and 20. See In re Antor Media
Corp., 689 F.3d 1282, 1287 (Fed. Cir. 2012) (Board deter-
mination of anticipation reviewed for substantial evi-
dence); In re NTP, Inc., 654 F.3d 1279, 1301-02 (Fed. Cir.
2011).
An anticipating reference must disclose every claim
limitation, either expressly or inherently. E.g., Atofina v.
Great Lakes Chem. Corp., 441 F.3d 991, 999 (Fed. Cir.
2006). Inherent disclosure requires that the prior-art
reference “necessarily include the unstated limitation.”
Id. at 1000; see also Cont’l Can Co. USA v. Monsanto Co.,
948 F.2d 1264, 1268 (Fed. Cir. 1991). “‘[P]robabilities or
possibilities’” are not enough to find that the prior art
inherently discloses something not explicitly present. In
re Oelrich, 666 F.2d 578, 581 (CCPA 1981).
Shields does not anticipate the claims here because it
does not disclose, either expressly or inherently, the
limitation requiring that Giuffrida’s device be “portable.”1
The Board itself observed that “Shields does not expressly
state that [its] system is portable or can be carried.” Ex
parte Giuffrida, at 11. In order to anticipate, therefore,
Shields must inherently disclose a “portable” system. But
there is no substantial evidence to support a finding of
inherent disclosure.
Like Giuffrida’s application, Shields describes a sys-
tem that uses electrical stimulation and voluntary exer-
cise to rehabilitate muscles. But what Shields discloses,
as it emphasizes in distinguishing prior art, is an appa-
ratus that “can safely provide . . . supported standing
exercise options to persons who either have limited physi-
cal mobility or complete loss of mobility due to muscular
1 The parties agree that the term “portable” is limit-
ing despite its location in the preamble.
6 IN RE: JOSEPH GIUFFRIDA
paralysis,” unlike prior devices that did not allow patients
to be “supported within the device, while their muscle
groups are being electrically stimulated for exercise . . . .”
Shields, at [0001-0002]. The claims thus include limita-
tions like a “rigid frame structure,” id. at pp. 5-6, and the
device is depicted like this:
Id. at figs. 2-3. Nothing in Shields’s disclosure of this
large apparatus establishes that it “must necessarily” be
portable. Atofina, 441 F.3d at 1000.
The Board found that Shields inherently discloses a
portable system because Shields does “not appear to
contain any structure confining it to a particular loca-
tion.” Ex parte Giuffrida, at 11. But that observation
does not indicate that Shields “necessarily” includes a
portability limitation, or even that Shields must neces-
sarily be free from “confin[ement] to a particular location.”
On the contrary, a finding that Shields does not say that
its system is not portable—which is all that the Board’s
statement implies—is just a restatement of the fact that
Shields does not expressly disclose a portability limita-
tion. It does not suggest anything about what Shields
inherently discloses that would suffice to shift the burden
to Giuffrida to disprove inherency. Id. at 11-12.
IN RE: JOSEPH GIUFFRIDA 7
Having reviewed Shields, the Board’s opinion, the Ex-
aminer’s determinations, and the Director’s argument on
appeal, we see no substantial evidence that the person-
supporting structure disclosed in Shields must be “porta-
ble.” That is so even under the Board’s view that the
broadest reasonable construction of “portable” requires
only that the item “can be carried.” Id. at 11. We note,
however, that the Board drew its construction from a
dictionary, whereas the PTO’s traditional pre-issuance
approach has been to give claims “their broadest reasona-
ble construction ‘in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” Phillips v.
AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (empha-
sis added); cf. 37 C.F.R. § 42.300(b), adopted at 77 Fed.
Reg. 48,680 (Aug. 14, 2012) (same). Here, Giuffrida’s
specification says that, to be “portable,” the system must
be “capable of being transported relatively easily,” and it
provides details about, and depictions of, the device that
are consistent with that meaning. A286-327. We need
not further address the proper construction, because a
fortiori Shields does not expressly or inherently meet the
narrower, specification-based interpretation.
Accordingly, the Board’s finding that Shields discloses
a “portable” rehabilitation system cannot stand. That
conclusion suffices to reverse the anticipation finding
based on Shields and the rejections that followed from it.
We therefore reverse the rejections of claims 2, 7, 16, and
20.2
2 Giuffrida also disputes the Board’s findings that
Shields teaches (1) a “sensor for measuring a subject’s
voluntary muscle activity having a signal related to the
muscle’s electrical activity” and (2) a “device worn by the
subject to provide FES.” Although the above is sufficient
to reverse the rejections, we are not persuaded by Giuffri-
da’s arguments concerning those limitations.
8 IN RE: JOSEPH GIUFFRIDA
B
Giuffrida makes two attacks on the obviousness rejec-
tions of claims 23-27: (1) a broad assertion that the Board
did not adequately support its conclusions with factual
findings and full legal analysis, and (2) a more specific
contention that the rejection of claim 24 was erroneous.
As to the first point, we decline to hold that the
Board’s obviousness findings were categorically improper.
We have previously upheld obviousness rejections when
the Board’s “‘path may reasonably be discerned,’” even if
“[i]ts conclusions [we]re cryptic, but . . . supported by the
record.” In re Huston, 308 F.3d 1267, 1280-81 (Fed. Cir.
2002); see also In re Applied Materials, Inc., 692 F.3d 1289
(Fed. Cir. 2012). The absence of an express finding about
the level of skill in the art, moreover, “does not give rise to
reversible error ‘where the prior art itself reflects an
appropriate level and a need for testimony is not shown.’”
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
2001). Here, the Examiner discussed what the prior art
taught and suggested while setting out the basis for his
ultimate conclusions. And the Board, largely agreeing
with the Examiner, discussed the same prior art and
many of the same suggestions and teachings in it. Ex
parte Giuffrida, at 14-17. We have no significant difficul-
ty discerning the Board’s path to the rejections. We need
not remand the case for more.
Although Giuffrida has not presented any persuasive
reasons to conclude that the Board’s analysis of prior art
was erroneous for claims 23 and 25-27, the rejection of
claim 24 is a different matter. Giuffrida has singled out
this claim and provided a separate, more developed
argument about it. Claim 24 depends from claim 23,
which recites a system in which sensor signals are “re-
ceived, processed, and wirelessly transmitted by one or
more electronic components.” Claim 24 adds the re-
quirement that the signals be “wirelessly retransmitted
over a two-way RF link.” A284. The specification touts
particular advantages from this retransmission over a
IN RE: JOSEPH GIUFFRIDA 9
two-way RF link, including more reliable data transfers
and longer battery life. A307-08.
We are not persuaded by the Board’s conclusion that
claim 24 would have been obvious in light of U.S. Patent
Application Publication No. US 2004/0024312 A1
(“Zheng”). Zheng discloses a system for “sensing the
gesture, posture and movement” of body parts. It uses
ultrasound transducers that communicate with a compact
unit, which, in turn, communicates with a computer.
Those communications are twice referred to as “wireless,”
Zheng, at [0070, 0073], but the document says little else
about them. It does not mention a radio frequency (RF)
link, a two-way or bidirectional link, the retransmission of
data over such a link, or any benefits from such retrans-
missions. We have been pointed to no substantial evi-
dence that Zheng teaches such features. See In re
Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000) (while
PTO’s ultimate obviousness determination reviewed as a
matter of law, underlying factual findings about teachings
of prior art reviewed for substantial evidence).
Nor has the Director persuasively explained why
Zheng renders those limitations from claim 24 obvious.
On the contrary, the reasoning within the PTO has been
inconsistent and conclusory in this matter. In stating
that it “fail[ed] to see how a system that can both receive
signals from sensors and deliver them to, for example,
FES systems, could operate absent a two-way link,” the
Board cited a paragraph in Zheng that mentions a wire-
less link between units embedded in the body and an
“outside control unit.” Ex parte Giuffrida, at 14 (citing
Zheng, at [0076]). The Examiner invoked different para-
graphs from Zheng to find that a two-way link is “implied”
or “required.” Broad-brush statements based on Zheng’s
generic references to a “wireless” link are insufficient to
support the conclusion that Zheng renders obvious a claim
calling for the “wireless[] retransmi[ssion] [of sensor
signals] over a two-way RF link.” We therefore reverse
the rejection of claim 24.
10 IN RE: JOSEPH GIUFFRIDA
CONCLUSION
For the foregoing reasons, the rejections of claims 23
and 25-27 are affirmed, and the rejections of claims 2, 7,
16, 20, and 24 are reversed.
AFFIRMED IN PART, REVERSED IN PART