Ex Parte Bradley

Patent Trial and Appeal Board

Apr 28, 2017

13958345 (P.T.A.B. Apr. 28, 2017)

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.
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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