Ex Parte BradleyDownload PDFPatent Trial and Appeal BoardApr 28, 201713958345 (P.T.A.B. Apr. 28, 2017) Copy Citation 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. 13/958,345 08/02/2013 Kerry Bradley 432469 001147 5111 7590 05/02/2017 Faegre Baker Daniels LLP PATENT DOCKETING - INTELLECTUAL PROPERTY (32469) 2200 WELLS FARGO CENTER 90 SOUTH SEVENTH STREET MINNEAPOLIS, MN 55402-3901 EXAMINER MAHMOOD, NADIA AHMAD ART UNIT PAPER NUMBER 3762 NOTIFICATION DATE DELIVERY MODE 05/02/2017 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): PatentDocketing @ F aegreB D .com e-OfficeActionBSC@FaegreBD.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KERRY BRADLEY Appeal 2015-003711 Application 13/958,3451 Technology Center 3700 Before MICHAEL C. ASTORINO, ROBERT L. KINDER, and ROBERT J. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’ decision rejecting claims 1—21. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 The Appellant identifies Boston Scientific Neuromodulation Corporation as the real party in interest. Appeal Br. 2. Appeal 2015-003711 Application 13/958,345 ILLUSTRATIVE CLAIM 1. A method for treating a patient requiring conditioning one or more muscle groups using at least one electrode implanted within a ventral epidural space of the patient, the method comprising: conveying electrical stimulation energy from the at least one implanted electrode to motor efferents respectively innervating the one or more muscle groups, thereby activating the one or more muscle groups. CITED REFERENCES The Examiner relies upon the following references: Kidd et al. (hereinafter “Kidd”) US 4,712,558 Dec. 15, 1987 Powell, III et al. (hereinafter “Powell”) US 5,358,513 Oct. 25, 1994 Meadows et al. (hereinafter “Meadows”) US 2003/0120323 Al June 26, 2003 Anderson US 2007/0150036 Al June 28, 2007 Kuzma et al. US 2007/0168007 Al July 19, 2007 (hereinafter “Kuzma”) REJECTIONS I. Claim 1 is rejected under 35 U.S.C. § 112(b),2 as failing to point out and distinctly claim the subject matter that the Appellant regards as the invention. 2 The Examiner rejects claim 1 under either 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph. Final Action 4. Because the Appellant’s application was filed after September 16, 2012, the AIA version of the statute is applied herein. See MPEP § 2161(1). 2 Appeal 2015-003711 Application 13/958,345 II. Claims 1—3, 5—9, 14, 15, and 19-21 are rejected under 35 U.S.C. § 103(a) as unpatentable over Meadows and Anderson.3 III. Claims 4 and 10-12 are rejected under 35 U.S.C. § 103(a) as unpatentable over Meadows, Anderson, and Powell. IV. Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over Meadows, Anderson, and Kuzma. V. Claims 16—18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Meadows, Anderson, and Kidd. FINDINGS OF FACT The findings of fact relied upon, which are supported by a preponderance of the evidence, appear in the following Analysis. ANALYSIS Rejection Under 35 U.S.C. § 112(b) According to the Final Office Action (page 4), claim 1 fails to provide sufficient antecedent basis for the limitation “the one or more muscle groups.” In response, the Appellant argues that the recitation of “one or more muscle groups” in the preamble of claim 1 provides such sufficient antecedent basis. Appeal Br. 4. We agree with the Appellant, because the use of the expression “one or more muscle groups” in the preamble may provide antecedent basis for 3 Although the Examiner sets forth separate statements for the rejection of claims 1—3, 5—9, 14, and 15 (Final Action 4—5) and the rejection of claims 19-21 (Final Action 8), both rejections are based upon the same combination of prior art references, i.e., Meadows and Anderson. As such, we have consolidated these statements into a single ground of rejection. 3 Appeal 2015-003711 Application 13/958,345 the same expression referenced in the body of the claim. See Pacing Techs., LLCv. Garmin Int 7, Inc., 778 F.3d 1021, 1024 (Fed. Cir. 2015). Accordingly, the rejection of claim 1 under 35 U.S.C. § 112(b) is not sustained. Rejection Under 35 U.S.C. § 103(a) The Appellant argues that the cited Meadows reference lacks the following feature of independent claim 1 (emphasis added): using at least one electrode implanted within a ventral epidural space of the patient. . . conveying electrical stimulation energy from the at least one implanted electrode to motor efferents. See Appeal Br. 5—6; Reply Br. 1—3. The Examiner takes the position that Meadows’ teaching of inserting an electrode “into the epidural space” (a region surrounding the spinal cord) encompasses such an insertion into both the dorsal epidural space (behind the spinal cord and toward the patient’s back), as well as the claimed “ventral epidural space” (in front of the spinal cord). Answer 6 (citing Meadows 179). According to the Examiner, the Appellant’s Specification reinforces the notion that the general reference to “epidural space” includes both its dorsal and ventral portions, by stating that “[t]he epidural space 128 may be topologically divided into two halves: a ventral epidural space 128a and a dorsal epidural space 128b.” Id. (citing Spec. 1364). According to the Appellant, Meadows teaches the use of an electrode in epidural space, generally, but not in the claimed “ventral” epidural space, 4 The Examiner refers to 137 of the published application, US 2014/0039574 A1 (pub. Feb. 6, 2014). Answer 6. This Decision refers to the version of the Specification dated August 2, 2013, wherein the text quoted by the Examiner appears at 136 thereof. 4 Appeal 2015-003711 Application 13/958,345 specifically. Appeal Br. 6; Reply Br. 1—2. Further, the Appellant contends that Meadows teaches no more than providing stimulation to the dorsal epidural space (Reply Br. 2 (citing Meadows 14)) — a technique that the Appellant characterizes as conventional (id. (citing Spec. 138)) — “[hjowever, locating electrodes in the ventral epidural space for stimulating efferent fibers in the manner of claim 1 is unmentioned in the cited art” (id. ). The Appellant’s arguments are persuasive of error in the rejection. The Examiner’s position is that Meadows’ general disclosure of an electrode in epidural space “discloses” or “includes” (Answer 6) the more specific disclosure of the unidentified ventral epidural space. Yet, such specificity is lacking in the cited portions of the reference, which do not mention the “ventral” epidural space. See Meadows H 3—4, 79. Accordingly, the rejection of claim 1 (and claims 2—21 depending therefrom) under 35 U.S.C. § 103(a) is not sustained. DECISION We REVERSE the Examiner’s decision rejecting claim 1 under 35 U.S.C. § 112(b). We REVERSE the Examiner’s decision rejecting claims 1—21 under 35 U.S.C. § 103(a). REVERSED 5 Copy with citationCopy as parenthetical citation