David Jiles et al.

Patent Trials and Appeals Board

Mar 29, 2022

2021002564 (P.T.A.B. Mar. 29, 2022)

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. 15/335,286 10/26/2016 David C. Jiles 510652 1373 53609 7590 03/29/2022 REINHART BOERNER VAN DEUREN P.C. 2215 PERRYGREEN WAY ROCKFORD, IL 61107 EXAMINER DORNA, CARRIE R ART UNIT PAPER NUMBER 3791 NOTIFICATION DATE DELIVERY MODE 03/29/2022 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): RockMail@reinhartlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DAVID C. JILES, MAGUNDAPPA RAVI L. HADIMANI, and PRIYAM RASTOGI ____________________ Appeal 2021-002564 Application 15/335,286 Technology Center 3700 ____________________ Before WILLIAM A. CAPP, JILL D. HILL, and CARL M. DeFRANCO, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE David C. Jiles et al. (“Appellant”)1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision of April 13, 2020, rejecting claims 1 and 17-20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant identifies the real party in interest as Iowa State University Research Foundation, Inc. Appeal Br. 2. Appeal 2021-002564 Application 15/335,286 2 BACKGROUND Claims 2-8 are allowed by the Examiner. Claims 9-16 are withdrawn. Independent claims 1 (apparatus) and 19 (method) are pending, rejected, and reproduced below with certain limitations italicized: 1. An apparatus for transcranial magnetic stimulation (TMS) and repetitive transcranial magnetic stimulation (rTMS) of deep regions of a patient’s brain, comprising: a top coil configured to produce a magnetic field suitable for transcranial magnetic stimulation; and at least one coil configured to produce at least one off- plane magnetic field and positioned relative to the top coil to enhance the magnetic field from the top coil to stimulate deep regions of the brain. 19. A method of generating an enhanced magnetic field for transcranial magnetic stimulation (TMS) and repetitive transcranial magnetic stimulation (rTMS) of deep regions of a patient's brain, comprising the steps of: generating a first magnetic field via a first coil; generating a second magnetic field via a second coil positioned at +30° relative to the first coil; and generating a third magnetic field via a third coil positioned at -30° relative to the first coil. REJECTIONS2 I. Claims 1, 17, and 18 stand rejected under 35 U.S.C. § 102(a)(1) as anticipated by Schneider ’042 (US 2010/0185042 A1, pub. July 22, 2010). Final Act. 2. II. Claims 19 and 20 stand rejected under 35 U.S.C. § 103 as unpatentable over Schneider ’921 (US 2015/0099921 A1, pub. April 9, 2015) and Schneider ’042. Final Act. 3. 2 The Examiner has withdrawn the indefiniteness rejections. Ans. 4. Appeal 2021-002564 Application 15/335,286 3 ANALYSIS Rejection I - Anticipation The Examiner finds that Schneider ’042 discloses a TMS apparatus having a top coil 505 and another coil 505’ that is “configured to produce [an] off-plane magnetic field and positioned relative to the top coil (505) to enhance the magnetic field from the top coil (505) to stimulate deep regions of the brain.” Final Act. 2 (citing Schneider ’042, Fig. 21, ¶ 231). The Examiner also finds that an actuator 507’ of Schneider ’042 controls the position of its coil 505’ and can tilt coil 505’ up to +30° or -30°, such that coil 505’ is configured to “produc[e] an off-plane magnetic field relative to that of the ‘top’ coil.” Id. at 2-3 (citing Schneider ’042, ¶ 235). Appellant argues claims 1, 17, and 18 as a group. Appeal Br. 5-7. We select independent claim 1 as representative of the group. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant argues that Schneider ’042 “does not disclose a ‘top coil’ as is known in the art, and the coil cited in Schneider [’042] as corresponding to the claimed top coil is not arranged as in the claims.” Appeal Br. 5. According to Appellant, in its Specification, the term “‘top coil’ is described as being a ‘coil fixed on top of the head.’” Id. (citing Spec., ¶¶ 14, 20, 31, 47, FIGS. 1A, 1B). Appellant contends that this construction of the term “top coil” is “consistent with usage in the art of TMS,” as evidenced by use of the term “top coil” in Schneider ’921 “to refer to a coil positioned over a patient's head.” Id. (citing Schneider ’921 ¶ 39, FIG. 2). Appellant argues that it is error for the Examiner to construe the term “top coil” as merely requiring a coil that is positioned on top of another coil. See id. Appeal 2021-002564 Application 15/335,286 4 Appellant argues that, even if the term “top coil” is not construed to require location atop a patient’s head, “there is still no basis to construe electromagnet 505 as being a top coil relative to any other electromagnet disclosed in Schneider [’042]” because the Examiner relies on Figure 21 of Schneider ’042, which is only a schematic diagram and not representative of actual coil location. See Appeal Br. 6. Appellant contends that the embodiments of Schneider ’042 only show “electromagnets ringed around the outside of the head,” except the embodiment of Figure 5A, “which depicts two electromagnets [525, 530] placed adjacent to each other near the forehead with no other electromagnets around the head,” and not a top coil or a coil “configured to produce [an] off-plane magnetic field.” See id. The Examiner responds that, while Appellant’s Specification describes embodiments “including a top coil disposed above a patient’s head,” Appellant’s Specification does not provide a special definition of the limitation ‘top coil’” that requires the coil’s placement atop a patient’s head. Ans. 3. The Examiner, thus, interprets the term “top coil” according to “its plain meaning as an uppermost or highest coil relative to a point of view and/or relative to another element.” Id. In addition, the Examiner contends that the disclosure in Schneider ’042 that its gantry can be moved about a patient’s head and its magnets can be moved and tilted with respect to its gantry, establish that the gantry and magnets of Schneider ’042 “may be positioned in such a manner that one coil (505) is located above the other (505’) constituting the ‘top coil’, and the other coil (505’) may be tilted to produce a magnetic field that is angularly offset from that of the top coil” as recited in claim 1. See id. at 4. Appeal 2021-002564 Application 15/335,286 5 Appellant replies that the Examiner’s interpretation of the term ‘top coil” is unsupported by evidence. Reply Br. 4 (“the Examiner cites no dictionary definition, evidence, or prior art to support the alleged plain meaning of ‘top coil.’”). Appellant contends that Schneider ’921 supports its proffered special definition of the term “top coil” as “being a coil placed over a subject’s head” in stating that “‘the head of the patient 201 is covered by a top coil 205.’” Id. (citing Schneider ’921, ¶ 39, Fig. 2). Regarding the proper construction of the term “top coil,” we determine that the Examiner has the better argument. Appellant’s Specification shows a coil 106 positioned above a patient’s head, and refers to this element as “a coil 106 positioned above the head” rather than simply a “top coil.” See Spec. ¶ 35, Fig. 1A. In this, Appellant neither defined the term “top coil” as requiring its placement above a patient’s head, nor did it use the term “top coil” in a way that assumes such placement. Appellant’s Specification refers to a “top coil” throughout, but never in a manner that we find indicative of a special meaning therefor, or a meaning restrictive to a location above a patient’s head. Consideration of Appellant’s Specification does not inform us that the term “top coil” has a special meaning to Appellant or a skilled artisan. Similarly, reference to a “top coil” 205, 255 in Schneider ’921 is insufficient to establish that the term “top coil” had special meaning to Appellant or a skilled artisan. See Schneider ’921, ¶¶ 39-40. We decline to limit the term “top coil” to require placement above a patient’s head. Further we note that the claims could, and do not, require placement of the top coil above a patient’s head. Appellant also contends that the schematic drawing of Figure 21 of Schneider ’042, and the discussion thereof, “provide no information Appeal 2021-002564 Application 15/335,286 6 regarding the physical positioning of one coil higher than or uppermost relative to the others, and thus, the Examiner’s rejection is premised on speculation and unfounded assumption.” Id. at 5 (“the Examiner has failed to demonstrate that the ability to move the magnets around the subject's head means anything other than circumferentially around the subject’s head,” wherein “no coil would be higher than or uppermost relative to the other coils.”). Further, Appellant argues, the Examiner has not established that moving the magnets around the gantry of Schneider ’042 includes “moving them in any other manner than circumferentially around the gantry or longitudinally along one of the arms of the gantry,” which “would not position one magnet higher than or uppermost relative to any other magnet.” Id. Appellant similarly argues that the magnet tilting disclosed by Schneider ’042 does not establish moving certain magnets “up or down relative to the other magnets.” Id. While we agree with Appellant’s arguments above, Schneider ’042 is prior art for all that it discloses, and the embodiment of Schneider’s Figure 5A (reproduced below) establishes an embodiment wherein one coil is placed above another. Appeal 2021-002564 Application 15/335,286 7 Schneider ’042 describes Figure 5A as showing one of “two forms of spatial relationship that two or more coils in an array can have [to] boost the summation of their fields.” Schneider ’042, ¶ 145. Figure 5A shows two TMS coils 525, 530 “placed alongside one another over head 500,” the coils having ”similar trajectories that will sum rather than cancel.” Id. Consideration of Figure 5A of Schneider ’042 informs us that coil 530 is located above coil 525. In addition, depiction of the upper coil 530 as positioned at an angle with respect to lower coil 525, perhaps to conform with the patient’s head shape, informs us that the upper coil 530 will produce a magnetic field that is in a different plane than the magnetic field produced by lower coil 525. Further, Schneider ’042 explains that the position of coil 525 enhances the magnetic field from coil 530 to stimulate deep regions of the brain. See Schneider ’042 ¶ 145 (stating that “trajectories [of coil 525 and coil 530] are substantially similar,” which “means that a significant percentage of their magnetic field output of the same phase will sum rather than cancel.”). Appeal 2021-002564 Application 15/335,286 8 Thus, although Figure 21, itself, does not support a finding of one coil atop another coil, the overall disclosure of Schneider provides such support. For these reasons, we sustain the Examiner’s rejection of independent claim 1. Claims 17 and 18 fall with claim 1. Rejection II - Obviousness The Examiner finds that Schneider ’921 discloses a TMS method comprising the steps of: (1) “generating a first magnetic field via a first coil (Figure 2, right side coil, 207);” (2) “generating a second magnetic field via a second coil (Figure 2, rear coil, 208) positioned at an angle relative to the first coil (207);” and (3) “generating a third magnetic field via a third coil (Figure 2, top coil, 205) positioned at an angle relative to the first coil (207) ([0037]-[0039]; [0045]).” Final Act. 3-4. The Examiner also finds that Schneider ’921 discloses a coil-supporting gantry that “permits rough and fine position adjustment of each of the second and third coils ([0039]; [0045]), but is silent on the particular angle or range of angles at which each coil is positioned.” Id. at 4. The Examiner finds that Schneider ’042 discloses a TMS method “comprising the steps of (1) generating a first magnetic field via a first coil (Figure 21, electromagnet, 505),” and (2) generating a second magnetic field via a second coil (Figure 21, electromagnet, 505’), the coils 505, 505’ being positionable at either +30° or -30° relative to one another. Id. (citing Schneider ’042 ¶¶ 23l-235). The Examiner concludes that it would have been obvious to “modify the method of Schneider et al. ’921 such that the second and third coils are positioned at +30° and -30°, respectively, relative to the first coil . . ., because Schneider [’042] teaches tilting one or more Appeal 2021-002564 Application 15/335,286 9 TMS coils at +30° or -30° is desirable to aim the stimulation at a desired neuronal target.” Id. (citing Schneider ’042 ¶ 235). Appellant argues claims 19 and 20 as a group, and we select independent claim 19 as representative of the group. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant argues that Schneider ’921 and Schneider ’042 fail to disclose, teach, or suggest the claimed “second coil positioned at +30° relative to the first coil” and “third coil positioned at -30° relative to the first coil.” Appeal Br. 7. According to Appellant, Schneider ’042 discloses gantry system adjustability only to “accurately position the electromagnets relative to the patient’s head and a desired stimulation area,” but not the actual arrangement of coils recited in independent claim 19 to increase field strength at a given depth within a patient’s brain. See id. at 7-8. Appellant contends that, despite the teaching in Schneider ’042 of adjusting electromagnetics “by up to ±45°,” Schneider ’921 and Schneider ’042 fail to disclose specifically arranging “electromagnetic coils relative to any other coils or at the specific angles of +30° and -30° as recited in claim 19.” Id. at 8. The Examiner responds that the rough and fine coil positioning of Schneider ’921 is directed to positioning each coil relative to the other coils “to achieve applying stimulation to the requisite target.” Ans. 5 (citing Schneider ’921 ¶ 39, Fig. 2). In addition, the actuators of Schneider ’042 “adjust the position of each magnet relative to the subject’s head,” and also “relative to each other” in angling the magnet at between +30° and -30° to stimulate a desired target. Id. The Examiner contends that claim 19 only requires the second coil being positioned at +30° relative to the first coil, and the third coil being positioned at -30° relative to the first coil. The Examiner Appeal 2021-002564 Application 15/335,286 10 reasons that the coils depicted in Figure 2 of Schneider ’921 are arranged relative to each other in three-dimensional space, such that tilting of the second coil 208 to +30° relative to the first coil 207 positions the second coil 208 at +30° relative to the first coil 207 required by claim 19. Id. at 6. Likewise, tilting of the third coil 205 -30° relative to the first coil 207 positions the second coil 208 at -30° relative to the first coil 207 required by claim 19. Id. We discern no error in the Examiner’s findings and reasoning. A review of the prior art informs us that tilting the coils 205, 208 of Schneider ’921 relative to coil 207 would have been understood to cause the magnetic fields of coils 205, 208 coils to be offset from the magnetic field of coil 207. That Schneider ’921 in view of Schneider ’042 renders the second coil 208 and third coil 205 of Schneider ’921 positionable at the claimed relative angles, rather than actually positioned thereat, does not evidence error in the Examiner’s findings and reasoning, particularly given that Appellant does not dispute the Examiner reasoning that such positioning is disclosed in the prior art to be “desirable to aim the stimulation at a desired neuronal target.” (Final Act. 4 (citing Schneider ’042 ¶ 235)). Appeal 2021-002564 Application 15/335,286 11 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 17, 18 102(a)(1) Schneider ’042 1, 17, 18 19, 20 103 Schneider ’921, Schneider ’042 19, 20 Overall Outcome 1, 17-20 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)(1)(iv). AFFIRMED