Federal Circuit disposition — 2010-1456

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
IN RE JAMES HOYT CLARK
__________________________
2010-1456
__________________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences in
Reexamination No. 90/008,777.
____________________________
Decided: May 20, 2011
____________________________
J. D AVID NELSON , Nelson, Snuffer, Dahle & Poulsen,
P.C., of Sandy, Utah, for appellant.
RAYMOND T. CHEN , Solicitor, Office of the Solicitor,
United States Patent and Trademark Office, of Alexan-
dria, Virginia, for the Director of the United States Patent
and Trademark Office. With him on the brief were
NATHAN K. K ELLEY and S COTT C. WEIDENFELLER , Associ-
ate Solicitors.
__________________________
Before LOURIE, M AYER , and O’MALLEY, Circuit Judges.

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IN RE CLARK 2
LOURIE, Circuit Judge.
James Hoyt Clark appeals the decision of the Board of
Patent Appeals and Interferences (“the Board”) affirming
the examiner’s rejections of claims 1–8, 13–25, 30–43, 48–
55, 60–72, and 77–86 of U.S. Patent 6,142,927 (“the ’927
patent”) for lack of written description under 35 U.S.C.
§ 112 and obviousness under 35 U.S.C. § 103(a). See Ex
Parte James Hoyt Clark, No. 2010-001688 (B.P.A.I. April
30, 2010) (“Board Decision”). Because the Board correctly
determined that these claims would have been obvious to
one of skill in the art, we affirm.
BACKGROUND
The ’927 patent is titled “Method and Apparatus for
Treatment with Resonant Signals,” and relates to “provid-
ing therapeutic treatment and promoting health of the
body or for treating food, chemical, vitamin, mineral,
metal, and biological sensitivities, through 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.” ’927 patent col.1 ll.9–15.
The specification generally refers to the applied elec-
tromagnetic radiation as “product signals,” id. col. 3 l.59–
col.4 l.56, which may be any signal within the electro-
magnetic spectrum up to the infrared band, id. col.3 l.65–
col.4 l.18. In addition to a square wave, a product signal
may be a triangular wave, sine wave, or other waveform,
and the specification indicates that the operator of the
patented system may vary the amplitudes of the wave-
forms that comprise the product signal as well as the
frequency of the product signal. Id. col. 6 ll.27–34. The
patented system transmits the product signals to the
patient’s body using an RF transmitter, a wire, or an
infrared transmitter. Id. col.8 l.64–col.9 l.13.

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IN RE CLARK 3
The specification teaches that the product signal
stimulates an electrical response in the patient’s body
that equals or approximates the body’s response to the
introduction of a “product,” such as a food, vitamin, or
mineral. Id. col.3 ll. 27–34, col. 6 ll. 3–20. This goal is
achieved when the product signal causes the electrical
impedance in an area of the patient’s body to approximate
the electrical impedance in that area as a result of intro-
ducing the product to the patient’s body. Id. col.7 ll.15–
32. This change in impedance occurs when the product
signal “resonate[s] with the body at the cellular level.” Id.
col.4 ll. 19–20; see also id. col.7 l.66–col.8 l.8.
The ’927 patent issued from an application that Clark
filed in September of 1998, and the patent has been
subject to multiple reexamination proceedings since it
issued in 2000. As a result of the first reexamination
proceedings, Clark amended the claims to recite a “radio
frequency transmitter” that transmits the therapeutic
electromagnetic signals to an area of the human body.
Shortly after the reexamination certificate issued, the
PTO ordered the instant reexamination. In the first office
action of this proceeding, the PTO rejected the reexam-
ined claims as obvious in light of documents that describe
the LISTEN system that Clark developed in the early
1990s.
For the issues raised in this appeal, the LISTEN sys-
tem is primarily disclosed in two references: the 1994
LISTEN manual and the C.E.D.S. News Section of the
Spring 1996 Issue of Vibrant Health (“the CEDS96 publi-
cation”). The LISTEN manual states that LISTEN is “a
data acquisition system and a skin conductance screening
system,” J.A. 169, and that the system stimulates the
patient’s body by applying “selected EM fields to change
the conductance until the stimulation produces the bal-

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IN RE CLARK 4
anced conductance,” Id. at 201. The manual states that
LISTEN also includes “a library of nonionizing nonther-
mal pulsed square wave electromagnetic (EM) frequen-
cies,” and the system applies electromagnetic radiation at
different frequencies to cause the balanced conductance.
Id.
The CEDS96 publication describes various electro-
magnetic therapy systems developed by Clark, including
LISTEN. The publication identifies the Accupath, In-
terro, and LISTEN systems, id. at 272, and states that
“[t]he systems that Jim Clark produces have the ability to
send out an electro magnetic (ie FM) signal.” Id. at 273.
The CEDS96 publication also indicates that the
transmitter that applies the electromagnetic signal in at
least some LISTEN and Interro systems is an FM trans-
mitter. The publication describes a “basic process” for
determining the electromagnetic signal to apply to a
patient. Id. at 273. After describing this process, the
publication states that the technology “requires an FM
transmitter,” and that LISTEN and some Interro models
utilize an FM transmitter. Id. at 273–74.
In response to the obviousness rejection based on
LISTEN, Clark amended the “radio frequency transmit-
ter” limitation to recite that the “radio frequency trans-
mitter” comprises a “modulation transmitter.” Claim 1,
reproduced below, is representative of the claims that
Clark amended, the underlined portion indicating mate-
rial added by the amendment:
1. Apparatus for administering, to a desired area
of application on a human body of a treat-
ment subject, one or more therapeutic elec-
tromagnetic signals of electromagnetic
waves or electric currents, each said signal
stimulating a response in said human body

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IN RE CLARK 5
which equals or approximates a response
stimulated by a product corresponding to
said signal, said apparatus comprising:
a) generating means for generating said electro-
magnetic signals, each said signal being a
function of a sequence of binary numbers
representing a corresponding product;
b) radio and frequency transmitter and antenna
for applying said electromagnetic signals to
said area of application, the radio transmit-
ter comprising a modulation transmitter.
Board Decision, at 5 (emphases in original). In addition
to amending the claims, Clark presented evidence that,
contrary to the CEDS96 publication, LISTEN did not use
an FM transmitter or radiate an FM signal. In particu-
lar, Clark presented the affidavit of Dr. Metin Gunsay,
which states that, after a review of LISTEN documents
and schematics, the system did not include an FM trans-
mitter or any other modulation circuit. J.A. 146. Instead,
Dr. Gunsay concluded that LISTEN supplied a wire
antenna with a series of square waves that varied in
frequency. Id. at 147. Dr. Gunsay testified that although
the electromagnetic signal radiated by the antenna varied
in frequency, the radiation would not constitute an FM
signal. Id.
In the same affidavit, Dr. Gunsay provided testimony
that the original specification of the ’927 patent filed in
1998 provided written support for the newly claimed
“modulation transmitter.” Dr. Gunsay testified in par-
ticular that those of skill in the art would have primarily
understood the term “radio frequency transmitter” to
mean “a traditional radio frequency transmitter, such as
an AM transmitter, FM transmitter or a PM transmitter.”
Id. at 146.

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IN RE CLARK 6
After considering the amendments, Clark’s argu-
ments, and the evidence Clark presented, the examiner
issued a final office action concluding that claims 1–8, 13–
25, 30–43, 60–72, and 77–86 were not patentable for
failure to provide written support for the “modulation
transmitter” limitation under 35 U.S.C. § 112, ¶ 1 and as
obvious under 35 U.S.C. § 103(a) in light of the LISTEN
manual in view of the CEDS96 publication. Board Deci-
sion, at 1–4.
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 Board also concluded that the claims on appeal
were obvious in light of the LISTEN manual and the
CEDS96 publication. The Board found that, in 1998, an
ordinary skilled worker knew of modulation transmitters,
such as FM transmitters, and considered modulation
transmitters to be conventional technology. Id. at 18, 20.
The Board found that both LISTEN and the claimed
invention involved the delivery of electromagnetic signals
and that persons of ordinary skill would have considered
modulation transmitters reasonably pertinent to the
LISTEN system because those transmitters, like trans-
mitters that do not use modulation, relate to the trans-
mission of electromagnetic signals. Id. at 18. The Board
also found that while Clark had established that LISTEN
did not disclose a “modulation transmitter,” there was no
evidence that equipping the LISTEN system with an FM
transmitter, as disclosed in the CEDS96 publication,
would render the modified system inoperable or could not
be completed with a reasonable expectation of success.
Id. at 19–21.

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IN RE CLARK 7
Clark timely appealed from the decision of the Board.
We have jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(4)(A).
D ISCUSSION
Clark appeals the Board’s determination that claims
1–8, 13–25, 30–43, 60–72, and 77–86 were not patentable
under 35 U.S.C. § 112, ¶ 1 for lack of written description
and 35 U.S.C. §§ 103(a) as obvious. Because we conclude
that the Board correctly determined that the reexamined
claims would have been obvious to those of ordinary skill
in the art, we do not address Clark’s written description
argument.
The scope of our review in an appeal from a Board de-
cision is limited. We review the Board’s factual findings
for substantial evidence and review the Board’s legal
conclusions de novo. In re Kotzab, 217 F.3d 1365, 1369
(Fed. Cir. 2000). A finding is supported by substantial
evidence if a reasonable mind might accept the evidence
to support the finding. Consol. Edison Co. v. NLRB, 305
U.S. 197, 229 (1938).
Under the Patent Act, “[a] patent may not be ob-
tained . . . if the differences between the subject matter
sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary
skill in the art to which said subject matter pertains.”
35 U.S.C. § 103(a) (2006). Although the ultimate deter-
mination of obviousness under § 103 is a question of law,
it is based on several underlying factual findings, includ-
ing (1) the scope and content of the prior art; (2) the level
of ordinary skill in the pertinent art; (3) the differences
between the claimed invention and the prior art; and (4)
evidence of secondary factors, such as commercial success,
long-felt need, and the failure of others. Graham v. John

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IN RE CLARK 8
Deere Co., 383 U.S. 1, 17–18 (1966). Given the mixed
nature of the obviousness determination, we review the
Board’s ultimate conclusion of obviousness de novo, but
review the Board’s underlying factual determinations for
substantial evidence. Kotzab, 217 F.3d at 1369.
Clark argues that it would not have been obvious to
modify the LISTEN system to include a modulation
transmitter because, while modulation transmitters were
well known in the communications field in 1998, it would
not have been obvious to use a modulation transmitter to
apply electromagnetic signals to a patient’s body for
therapeutic purposes. To support this argument, Clark
points to testimony from Clark’s expert on the ultimate
obviousness conclusion and evidence that the CEDS96
publication incorrectly stated that LISTEN used an FM
transmitter and transmitted an FM signal.
We disagree. As an initial matter, Clark does not dis-
pute the Board’s finding that the only limitation the
LISTEN manual does not disclose is the “modulation
transmitter” limitation. Similarly, while Clark argues
that modulation transmitters would not have been con-
sidered analogous art, Clark does not dispute the Board’s
finding that the LISTEN manual and the CEDS96 publi-
cation are analogous art.
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). Here, nothing in the CEDS96 publication indicates

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IN RE CLARK 9
that the statements regarding FM transmissions were in
error, and the Board therefore properly considered the
reference. And, in any event, the statements regarding
FM transmissions were also directed at other electromag-
netic therapy systems that Clark developed in addition to
LISTEN, specifically the Accupath and Interro systems.
Notably, Clark did not dispute that at least some models
of these systems utilized FM transmitters or applied FM
signals to a patient’s body for therapeutic purposes.
In light of the Board’s proper consideration of the
CEDS96 publication, Clark’s argument that a modulation
transmitter would not have been considered pertinent to
electromagnetic therapy systems is without merit. The
CEDS96 publication equates an “electro magnetic” signal
with an “FM” signal and states that the described elec-
tromagnetic therapy technology “requires an FM trans-
mitter.” Id. at 273–74. In addition to the CEDS96
publication, Dr. Gunsay’s affidavit establishes that one of
ordinary skill in the art would have understood in 1998
that radio frequency transmissions, which include the
electromagnetic transmissions disclosed in the LISTEN
manual, could be transmitted using a “conventional radio
frequency transmitter, such as an AM transmitter, an FM
transmitter, or a PM transmitter.” J.A. at 146. 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 reexam-
ined claims.
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

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IN RE CLARK 10
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).
CONCLUSION
Accordingly, we affirm the Board’s determination that
claims 1–8, 13–25, 30–43, 48–55, 60–72, and 77–86 were
not patentable.
AFFIRMED

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