Ex Parte Erickson et al

Patent Trial and Appeal Board

Aug 16, 2016

12245208 (P.T.A.B. Aug. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/245,208 10/03/2008 John H. Erickson
35320 7590 08/18/2016
PA TENT I LEGAL DEPARTMENT
ST. JUDE MEDICAL NEUROMODULA TION DIVISION
6901 PRESTON ROAD
PLANO, TX 75024
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
07-013 CIP 3476
EXAMINER
VOORHEES, CATHERINE M
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
08/18/2016 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):
Patent.CRMDSylmar@sjm.com
lcancino-zepeda@sjm.com
epineiro@sjm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN H. ERICKSON, ROBERT L. MCCORMICK,
and BENJAMIN A. TRANCHINA
Appeal2013-004429
Application 12/245,208
Technology Center 3700
Before JOHN C. KERINS, WILLIAM A. CAPP, and LEE L. STEPINA,
Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John H. Erickson et al. (Appellants) seek our review under 35 U.S.C.
§ 134(a) of the Examiner's final rejection of claims 1-20. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2013-004429
Application 12/245,208
THE INVENTION
Appellants' invention is directed to a method of operating an
implantable pulse generator for tissue stimulations. Independent claim 1,
reproduced below, is illustrative:
1. A method of operating an implantable pulse generator for
stimulating tissue of a patient, comprising:
providing power to a voltage converter of the implantable
pulse generator at a first voltage level;
outputting a second voltage level by the voltage converter,
the second voltage level being a variable voltage level that is
controlled by a control signal provided to the voltage converter,
the second voltage level being provided to pulse generating
circuitry of the implantable pulse generator, the second voltage
level being selectable from a plurality of voltages including non-
integer multiples of the first voltage level;
generating pulses by the pulse generating circuitry, the
pulse generating circuitry including current control circuitry for
controlling the pulses to cause the pulses to provide constant
current to tissue of the patient; and
applying at least two different control signals to the
voltage converter during individual pulses to provide
successively increasing voltages to the pulse generating circuitry
during a respective pulse of constant current.
THE REJECTIONS ON APPEAL
The Examiner has rejected:
(i) claims 1-20 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement set forth therein;
(ii) claims 1-9, 11-16, and 19 under 35 U.S.C. § 103(a) as being
unpatentable over Wong (US 6,934,584 Bl, issued Aug. 23,
2005) in view of Stanton (US Re. 32,091, reissued Mar. 11,
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Application 12/245,208
1986), 1 and Erickson '270 (US 2004/0210270 Al, published
Oct. 21, 2004 );
(iii) claims 10 and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Wong in view of Stanton, Erickson '270, and
Bartelt (US 5,063,929, issued Nov. 12, 1991); and
(iv) claims 17 and 18 under 35 U.S.C. § 103(a) as being
unpatentable over Wong in view of Stanton, Erickson '270, and
Erickson '098 (US 2006/0259098 Al, published Nov. 16,
2006).
The rejections under 35 U.S.C. § 103(a) are predicated on the
Examiner taking the position that Appellants are entitled only to the filing
date of the actual application on appeal, namely October 3, 2008, and are not
entitled to claim priority back to the filing date of Provisional Application
No. 60/685,036, namely May 26, 2005. The Examiner appears to take the
position that, if Appellants are entitled to the filing date of the Provisional
Application, then Erickson '270 and Erickson '098 references would not be
available as prior art. Final Act. 4; Ans. 10.
ANALYSIS
Claims 1-20--35 U.S. C. § 112, first paragraph-Enablement
The Examiner takes the position that "[t]he description of the present
application ... does not describe applying the 'two different control signals .
. . during individual pulses to provide successively increasing voltages to the
pulse generating circuitry,"' as recited in independent claims 1 and 11. Final
Act. 4--5. As such, according to the Examiner, "[t]he specification does not
1 Reissued from original Letters Patent No. 4,392,496, issued July 12, 1983.
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Application 12/245,208
enable any person skilled in the art ... to make and use the invention
commensurate in scope with the claims." Id. at 5.
The Examiner's initial position appears to be focused mainly on the
alleged lack of a disclosure of "two different control signals" for
"increasing voltages." Final Act. 2. In the Answer, the Examiner steps
through a discussion of a number of the Wands2 factors, and states at one
point that a person of ordinary skill in the art, given Appellants' disclosure
"could construct a method and device where a voltage converter may be
employed to change the voltage during constant current pulses." Ans. 5.
The aspect that the Examiner asserts is not enabled is "how two different
control signals are applied ... to provide successively increasing voltages"
because Appellants' Specification "does not provide guidance or direction as
to when the two different control signals are applied." Id.
Figures 7C and 12 of Appellants' Specification, as well as the
discussion of the circuit of Figure 5 at paragraph 69 of the Specification
(paragraph 67 of the Provisional Application), provide sufficient disclosure
to enable a person of ordinary skill in the art to understand how to use
control signals to effectuate changes in voltage, as well as when, during a
given pulse, one should increase the voltage (i.e., when the instant voltage is
on the verge of becoming insufficient to maintain constant current for the
pulse). Appellants' discussion of these disclosures at pages 3-7 of the Reply
2 In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (identifying factors to be
considered in determining if undue experimentation would be required to
make and use a disclosed invention).
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Application 12/245,208
Brief cast light on how the disclosures would be understood by those of
ordinary skill in the art. 3
The Examiner additionally takes the position that "there is inadequate
description of 'changing the control signal provided to the voltage converter
in response to the monitoring,'" as recited in claim 5. Final Act. 5.
However, the Examiner does not provide specifics as to how the disclosure
is deficient, and how any such deficiencies are seen as giving rise to a need
for undue experimentation on the part of a person of ordinary skill in the art
to make and use the invention of claim 5.
Accordingly, the rejection of claims 1-20 as lacking enabling
disclosure is not sustained.
Priority/Effective Filing Date
As noted previously, Appellants and the Examiner have different
positions regarding whether Appellants are entitled to rely for priority on the
May 26; 2005; filing date of US Provisional Patent Application 60/685;036;
for the limitation reciting "applying at least two different control signals to
the voltage converter during individual pulses to provide successively
increasing voltages to the pulse generating circuitry during a respective
pulse." See, e.g., Final Act. 4; Appeal Br. 7. Ultimately at issue is whether
3 Appellants include a seemingly inaccurate statement in this discussion.
Appellants maintain, with respect to Figure 7C of the application, that "the
generation of the constant current of active discharge pulse 750 is explicitly
described in the provisional application as being controlled according to the
specific operations of voltage/current control circuitry 152 of FIG. 5," citing
to paragraph 79 of the provisional application. Id. at 6. That paragraph
expressly refers to the control of the active discharge pulse being performed
by the control circuitry of Figure 6A, not Figure 5. This error does not
ultimately adversely affect our decision as to the enablement rejection.
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Application 12/245,208
Erickson '270 and Erickson '098 are properly citable as prior art against
Appellants' claims on appeal.
We need not reach this issue. As discussed in greater detail below, we
are persuaded that the Examiner erred in rejecting the claims as being
unpatentable over the reference cited in each rejection, even assuming that
Erickson '270 and Erickson '098 are available as prior art.
Claims 1-9, 11-16, and 19-35 U.S.C. § 103(a)--Wong/Stanton/Erickson
'270
The Examiner's initial findings relative to independent claims 1
and 11 include that Wong discloses the limitation requiring "applying at
least two different control signals to the voltage converter during individual
pulses to provide increasing voltages to the pulse generating circuitry during
a respective pulse." Final Act. 7, 8. The Examiner cites to column 6,
line 56-column 7, line 40, of Wong, explaining that "control signals
produced by logic block 406 are digital pulse signals and increase the
voltage provided to the pulse generating circuitry." Id. The Examiner
additionally cites to column 6, line 4---column 7, line 2, of Wong, explaining
that "the second voltage level is variable depending upon the generated
mode control signals [CTLl-18]." Id.
We do not agree with the Examiner that these passages in Wong
evidence that Wong discloses the claim limitation that they are cited for.
The digital pulse signals referred to by Wong and cited by the Examiner
relate to a system for increasing/multiplying the battery voltage to a higher
level required to effect proper pacing in advance of a pacing pulse being
delivered. Wong, col. 7, 11. 22-25 (discussing multiplying battery voltage to
supply a pacing pulse). No mention is made of increasing voltage during a
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pulse. We further fail to see how the discussion of mode control signals
CTL1-CTL18 in Wong involves increasing a voltage during a pulse. The
Examiner's position that Wong discloses increasing voltage during a pulse is
not supported by a preponderance of the evidence.
The rejection of claims 1 and 11, and of claims 2-9, 12-16, and 19 as
being unpatentable over Wong, Stanton, and Erickson, is not sustained.
Claims 10 and 20---35 U.S.C. § 103(a)--Wong/Stanton/Erickson '270/Bartelt
The Examiner's position as to this rejection suffers the same
deficiency as discussed above. The rejection is not sustained.
Claims 17 and 18--35 U.S. C. § 103 (a)--Wong/Stanton/Erickson
'270/Erickson '098
The Examiner's position as to this rejection suffers the same
deficiency as discussed above. The rejection is not sustained.
DECISION
The rejection of claims 1-20 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the enablement requirement set forth therein, is
REVERSED.
The rejection of claims 1-9, 11-16, and 19 under 35 U.S.C. § 103(a)
as being unpatentable over Wong in view of Stanton and Erickson '270 is
REVERSED.
The rejection of claims 10 and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Wong in view of Stanton, Erickson '270, and Bartelt is
REVERSED.
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Application 12/245,208
The rejection of claims 17 and 18 under 35 U.S.C. § 103(a) as being
unpatentable over Wong in view of Stanton, Erickson '270, and Erickson
'098 is REVERSED.
REVERSED
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