Ex Parte Goetz et al

Board of Patent Appeals and Interferences

Aug 24, 2012

11591188 (B.P.A.I. Aug. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte STEVEN M. GOETZ, RICHARD T. STONE,
WARREN W. BALL, and CARL D. WAHLSTRAND
__________

Appeal 2011-009926
Application 11/591,188
Technology Center 3700
__________

Before TONI R. SCHEINER, ERIC GRIMES, and ERICA A. FRANKLIN,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to methods
and products for programming an implantable lead. The Examiner has
rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
“In general, an implantable stimulator delivers neurostimulation
therapy in the form of electrical pulses. . . .[S]timulation may be used in
Appeal 2011-009926
Application 11/591,188

2
different therapeutic applications, such as deep brain stimulation (DBS),
spinal cord stimulation (SCS),” etc. (Spec. 1, ¶ 3.) A physician sets the
parameters (electrode combination, electrode polarity, etc.) for the therapy
(id. at 1, ¶ 4), and the “design of the user interface used to program the
implantable neurostimulator . . . has a great impact on the ability to
efficiently define and select efficacious stimulation programs” (id. at 3, ¶ 8).
The Specification discloses a “user interface that permits a user to
view electrodes from different perspectives relative to the lead and/or
actuate both axial and rotation control media to select or view electrodes on
the lead [to] facilitate efficient evaluation, selection and programming of
electrode combinations and stimulation programs” (id. at 4, ¶ 14).
Claims 1-30 are on appeal. Claim 1 is representative and reads as
follows:
1. A method comprising:
presenting on a display a side view of a representation of an
implantable lead, wherein the implantable lead comprises a plurality of non-
contiguous electrode segments located at different angular positions about a
circumference of the lead and different axial positions along a length of the
lead, and wherein the side view comprises a representation of at least a
portion of at least some of the plurality of non-contiguous electrode
segments of the implantable lead;
presenting on the display a cross-sectional view of the representation
of the lead, wherein the cross-sectional view comprises a representation of at
least a portion of at least some of the plurality of non-contiguous electrode
segments of the implantable lead; and
receiving user input via interaction with at least one of the side view
and the cross-sectional view defining stimulation for delivery by a medical
device via the lead.

The other independent claims are claims 11 and 20. Claim 11 is
directed to a programmer comprising, among other things, “a processor that
Appeal 2011-009926
Application 11/591,188

3
presents a side view of a representation of an implantable lead via the user
interface . . . wherein the side view comprises a representation of at least a
portion of at least some of the plurality of non-contiguous electrode
segments of the implantable lead” (Appeal Br. 19). Claim 20 is directed to a
computer readable medium comprising instructions to cause a processor to,
among other things, “present on a display a side view of a representation of
an implantable lead . . . wherein the side view comprises a representation of
at least a portion of at least some of the plurality of non-contiguous electrode
segments of the implantable lead” (Appeal Br. 21).
The Examiner has rejected claims 1, 2, 9, 11, 12, and 18-21 under 35
U.S.C. § 103(a) as obvious based on Edwards1 (Answer 3). The Examiner
has also rejected claims 3-8, 10, 13-17, and 22-30 under 35 U.S.C. § 103(a)
as obvious based on Edwards and Goetz2 (Answer 5). The same issue is
dispositive with respect to both rejections.
The Examiner finds that “Edwards disclose[s] the claimed method,
apparatus and computer usable medium for gastric nerve stimulation
including (e.g. Col. 11, lines 1-9; Figure 73) . . . a processor presenting a
side view of a representation of an implantable lead (e.g. screen icon 450
which shows a side view of the lead and its location in the esophagus; Col.
38, lines 15-25)” (Answer 3).
With regard to presenting a side view that “comprises a representation
of at least a portion of at least some of the plurality of non-contiguous
electrode segments of the implantable lead,” as required by claim 1, the

1 Edwards et al., US 6,358,245 B1, Mar. 19, 2002
2 Goetz, Patent Application Publication US 2004/0098063 A1, May 20, 2004
Appeal 2011-009926
Application 11/591,188

4
Examiner reasons that “[s]ince the term ‘portion’ is very broad, the side
view need only show an infinitesimally small portion of the electrode
segments, which the device of Edwards does” (id. at 4).
The Examiner also reasons that the “claims do not require that the side
view show any portion or features of the complex array, but rather simply a
representation of the features” (id. at 7). The Examiner finds that “[b]y
displaying treatment device TD in Figure 74, Edwards discloses a side view
of a representation of a lead with a complex array, thus also shows a
representation of that complex electrode array geometry” (id.) and that “[b]y
displaying treatment device TD screen icon 450 of Figure 74 displays a
representation of the complex electrode array” (id.).
Appellants argue that “the Examiner’s interpretation of the term
‘portion’ is unreasonably broad. . . . A representation of a portion of an
electrode segment cannot be presented on a display unless the portion is
large enough to be seen. . . . The Examiner's interpretation would effectively
remove the limitation from the claim.” (Appeal Br. 9.) Appellants also
argue that “screen icon 450 does not illustrate a representation of any
electrodes or any portion thereof” (id. at 11) and that “[i]n screen icon 450 in
any of FIGS. 73-81 of Edwards, TD is a representation of a treatment
device, not a representation of an electrode” (id. at 12).
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). We agree with Appellants
that the Examiner has not shown that Edwards discloses or would have made
obvious presenting on a display a side view of a representation of an
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Appeal 2011-009926
Application 11/591,188

7
We disagree with the Examiner’s apparent position that Edwards
necessarily shows a representation of a portion of an electrode because
showing a “side view of a representation of a lead with a complex array . . .
also shows a representation of that complex electrode array geometry”
(Answer 7). We also disagree with the Examiner that Edwards would have
made obvious this limitation because it would have been obvious to “display
the device of Figure 39 using the GUI display of Figure 74” (id. at 4). The
Examiner has not pointed to any disclosure in Edwards that would indicate
that screen icon 450 is intended to accurately reflect the structural
characteristics of the therapy device (TD). To the contrary, Edwards states
that the purpose of screen icon 450 is simply to indicate “the operating
condition of the treatment device TD and its position inside or outside the
esophagus” (Edwards, col. 38, ll. 16-18). Thus, the Examiner has not shown
that Edwards’ screen icon 450 inherently meets the disputed limitation or
that it would have been obvious to modify it to meet that limitation.
With regard to the rejection of claims 3-8, 10, 13-17, and 22-30, the
Examiner cites Goetz only to show the obviousness of “various uses of
stimulation fields” (Answer 5), and points to nothing in Goetz to make up
for the deficiency of Edwards.
Appeal 2011-009926
Application 11/591,188

8
SUMMARY
We reverse both of the rejections on appeal because the Examiner has
not shown that Edwards, alone or combined with Goetz, would have made
obvious a method or product meeting all the limitations of the appealed
claims.

REVERSED

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