CAFC finds re-examined claims of U.S. Patent 6,142,927 obvious

One James Hoyt Clark appealed a decision of the BPAI to the
CAFC, but lost relating to the obviousness of the appealed re-examined
claims from U.S. Patent 6,142,927.

The appealed invention related to the application
of electromagnetic radiation to the body in the form of
signals of nonionizing, nonthermal, low energy, frequency
specific electromagnetic radiation or low voltage alternat-
ing or direct current.”


A reference is available for all that it teaches:

Instead, Clark primarily argues that the CEDS96
publication does not teach a modulation transmitter
because the reference incorrectly states that the LISTEN
system employed an FM transmitter and transmitted an
FM signal. However, absent an obvious error on the face
of the reference, a reference is prior art for what it dis-
closes, even if the commercial system that the reference
describes operated differently than disclosed in the refer-
ence. See In re Garfinkel, 437 F.3d 1005, 1008 (C.C.P.A
1971).

The observant reader will note an "obvious" error in the citation
to Garfinkel. No case decided by the CCPA appears in F.3d.
The actual citation for Garfinkel is In re Garfinkel, 437 F. 2d 1000,
168 USPQ 659 (CCPA 1971), so the CAFC also got the initial page wrong,
in addition to the F.3d error.

The Garfinkel case is usually cited for a somewhat different proposition:

Where applicant has clearly admitted on the record that subject matter relied on in the reference is prior art. In this case, that subject matter may be used as a basis for rejecting his or her claims and may not be overcome by an affidavit or declaration under 37 CFR 1.131. In re Hellsund, 474 F.2d 1307, 177 USPQ 170 (CCPA 1973); In re Garfinkel, 437 F.2d 1000, 168 USPQ 659 (CCPA 1971); In re Blout, 333 F.2d 928, 142 USPQ 173 (CCPA 1964); In re Lopresti, 333 F.2d 932, 142 USPQ 177 (CCPA 1964).” [from MyPatentBar.com]

MPEP 715 puts it this way:

Where applicant has clearly admitted on the record that subject matter relied on in the reference is prior art. In this case, that subject matter may be used as a basis for rejecting his or her claims and may not be overcome by an affidavit or declaration under 37 CFR 1.131. In re Hellsund, 474 F.2d 1307, 177 USPQ 170 (CCPA 1973); In re Garfinkel, 437 F.2d 1000, 168 USPQ 659 (CCPA 1971); In re Blout, 333 F.2d 928, 142 USPQ 173 (CCPA 1964); In re Lopresti, 333 F.2d 932, 142 USPQ 177 (CCPA 1964).

See also Anything You Say Can Be Used Against You: Admissions of Prior Art , 82 J. Pat. & Trademark Off. Soc'y 347 (2000)


Of "substantial evidence":

In sum,
substantial evidence supports the Board’s underlying
factual findings on the scope and content of the prior art
and the differences between the prior art and the reexamined claims.

KSR appears at the end of an obviousness analysis:

In light of these factual findings, we conclude that the
reexamined claims would have been obvious to one of skill
in the art when Clark filed the patent application that
issued as the ’927 patent. Conventional modulation
transmitters were known in the art in 1998, and nothing
in the LISTEN manual precludes the use of a conven-
tional modulation transmitter or indicates that the use of
a modulation transmitter would render the LISTEN
system inoperable. In addition, the CEDS96 publication
motivated those of skill in the art to use an FM transmit-
ter with the LISTEN system because the article states
that an FM transmitter is required “[i]n order for this
technology to work” and expressly states that the LISTEN
system employed an FM transmitter and transmitted an
FM signal. Id. Finally, the CEDS96 publication states
that, in addition to the LISTEN system, other electro-
magnetic therapy systems developed by Clark used an
FM transmitter and transmitted FM signals. Id. at 272–
74. In total, the evidence shows that equipping the
LISTEN system disclosed in the LISTEN manual with an
FM transmitter in 1998 involved the combination of
familiar elements according to known methods and would
yield predictable results. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007).

There was also a rejection for lack of written description:

Clark appealed the rejections to the Board, and the
Board affirmed. With regard to written description, the
Board found that the specification failed to disclose to
those skilled in the art that Clark possessed a “modula-
tion transmitter” when he filed the original specification
in 1998. Id. at 8–13.

The CAFC did NOT reach the issue of written description.