Ex Parte Bradley et al

Patent Trial and Appeal Board

Oct 31, 2014

12476951 (P.T.A.B. Oct. 31, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/476,951 06/02/2009 Kerry Bradley 05-00989-06 6419
71422 7590 10/31/2014
VISTA IP LAW GROUP LLP/BSC - NEUROMODULATION
2040 MAIN STREET, Suite 710
IRVINE, CA 92614
EXAMINER
GETZOW, SCOTT M
ART UNIT PAPER NUMBER
3762
MAIL DATE DELIVERY MODE
10/31/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KERRY BRADLEY and
JAMES R. THACKER
____________

Appeal 2012-006263
Application 12/476,9511
Technology Center 3700
____________

Before DONALD E. ADAMS, LORA M. GREEN, and
ELIZABETH A. LaVIER, Administrative Patent Judges.

LaVIER, Administrative Patent Judge.

DECISION ON APPEAL

The Examiner finally rejected claims 18–36 as obvious under 35
U.S.C. § 103(a). Appellants seek reversal of the Examiner’s rejection,
pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
For the reasons set forth below, we AFFIRM.
BACKGROUND
The Specification relates to neurostimulation systems, such as those
used for spinal cord stimulation, and describes how to determine the relative

1 According to Appellants, the real party in interest is Boston Scientific
Neuromodulation Corporation. (Appeal Br. 2.)
Appeal 2012-006263
Application 12/476,951

2
position and orientation of electrodes on neurostimulation leads for use in
such systems. (Spec. ¶ 2.) Claim 18 is representative:
18. A method of correcting the relative migration between
neurostimulation leads implanted within a patient, the
neurostimulation leads carrying an array of electrodes
programmed with stimulation parameters, the method
comprising:
conveying electrical current through a first group of electrodes
in accordance with the stimulation parameters, thereby
generating a nominal electrical field to stimulate tissue of the
patient;
allowing the neurostimulation leads to migrate relative to each
other, thereby changing a relative position or orientation
between the neurostimulation leads;
conveying electrical energy to or from an electrode on one of
the neurostimulation leads after the neurostimulation leads have
migrated relative to each other;
measuring an electrical parameter at an electrode on another of
the neurostimulation leads in response to the conveyance of the
electrical energy;
analyzing the measured electrical parameter to determine the
relative position or orientation between the migrated
neurostimulation leads; and
reprogramming the electrodes with new stimulation parameters
in response to the determination of the relative position or
orientation between the neurostimulation leads.
(Supp. Appeal Br. 3 (Claims App.).)
Appeal 2012-006263
Application 12/476,951

3
REJECTION
On appeal, the Examiner maintains the rejection of claims 18–36
under 35 U.S.C. § 103(a) as unpatentable over Mann2 in view of Swanson.3
(Ans. 4.)
DISCUSSION
Appellants do not dispute the Examiner’s finding that Swanson and
Mann teach the elements of claims 18–36. Instead, Appellants argue that
there is no support for the combination of these references, aside from
impermissible hindsight bias. (Appeal Br. 4–5.) Appellants argue the
claims together, so we focus on claim 18.
The Examiner finds that Mann teaches using two leads, each with
multiple electrodes, and conveying electrical energy to stimulate a patient’s
tissue. (Ans. 4 (citing Mann col. 14, l. 25 et seq.).) If the lead contacts
move relative to one another, Mann provides for reprogramming the
electrodes. (Ans. 4.) The Examiner observes that the step of allowing the
leads to migrate is “simply the normal circumstances of leads inside a body,”
and that the step of conveying electrical energy after movement of the leads
is “simply the normal sensing or stimulation that is performed by implanted
neurostimulation leads.” (Id.) The Examiner relies on Swanson as
disclosing “various ways” of sensing a lead’s location relative to another
lead, such as impedance. (Id. at 4–5 (citing Swanson col. 15, l. 50 et seq.).)
Combining the measuring and analyzing steps of Swanson to determine
relative lead orientation with the device of Mann would have been obvious,
according to the Examiner, “since such would be predictable in its outcome,

2 U.S. Patent No. US 6,393,325 B1, issued May 21, 2002.
3 U.S. Patent No. 5,722,402, issued Mar. 3, 1998.
Appeal 2012-006263
Application 12/476,951

4
and that detecting lead migration, using the system of Swanson, would help
facilitate the determination of when the leads ‘gradually or unexpectedly
move’ relative to each other, in the system of Mann,” and allow for
reprogramming of the device, as taught in Mann, “to stimulate the desired
original site.” (Id. at 5.)
Appellants argue that Swanson’s measurement of impedance to
determine the proximity of an ablation probe to a mapping probe, for
locating the ablation probe within the heart chamber, “is non-analogous to
the measurement of impedance to determine the migration of implanted
neurostimulation leads relative to each other.” (Appeal Br. 5.) According to
Appellants, the Examiner’s combination thus uses Swanson to perform a
different function (i.e., detecting relative migration between
neurostimulation leads implanted in a patient) than disclosed in the reference
(i.e., locating an ablation probe relative to tissue). (Reply Br. 2–3.) As
Swanson is inapplicable to the migration of leads relative to a paresthesia
area, Appellants assert that Swanson “suggests nothing” with respect to
Mann, and that combining these references is only possible with hindsight,
in view of the Specification. (Appeal Br. at 6.)
We are unpersuaded by Appellants’ arguments. Appellants’ position
relies on limiting Swanson’s applicability to the particular electrode types
disclosed therein. However, Appellants fail to explain why the methods for
determining electrode proximity described in Swanson are so constrained.
Therefore, we agree with the Examiner that one of ordinary skill in the art
would have been able to employ “inferences and creative steps,” KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) to fit the teachings of Mann
Appeal 2012-006263
Application 12/476,951

5
and Swanson “together like pieces of a puzzle,” id. at 420, to arrive at the
claimed invention (see Ans. 7).
CONCLUSION
The rejection of claim 18 is affirmed. Claims 19–36 fall with claim
18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

kmm