Ex Parte He et alDownload PDFPatent Trial and Appeal BoardJun 21, 201311177503 (P.T.A.B. Jun. 21, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte YUPING HE and DAVID K. L. PETERSON __________ Appeal 2011-010739 Application 11/177,503 Technology Center 3700 __________ Before ERIC GRIMES, ERICA A. FRANKLIN, and SHERIDAN K. SNEDDEN, Administrative Patent Judges. SNEDDEN, Administrative Patent Judge. DECISION ON APPEAL This appeal1 under 35 U.S.C. § 134 involves claims 32-60. The Examiner entered rejections under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellant identifies the Real Party in Interest as Boston Scientific Neuromodulation Corporation (App. Br. 3). Appeal 2011-010739 Application 11/177,503 2 STATEMENT OF THE CASE Claim 32 is illustrative of the appealed subject matter and reads as follows (emphasis added): 32. An implantable stimulator device, comprising: a plurality of electrode nodes for stimulating tissue; a plurality of current source stages, each current source stage comprising: a current source for sourcing a sourced output current, and a switch bank, wherein each switch bank comprises a plurality of switches each connected directly to one of the electrode nodes for receiving the sourced output current and for directing the sourced output current to any of the plurality of electrode nodes; and a plurality of current sink stages, each current sink stage comprising: a current sink for sinking a sinked output current, and a switch bank, wherein each switch bank comprises a plurality of switches each connected directly to one of the electrode nodes for receiving the sinked output current and for directing the sinked output current from any of the plurality of electrode nodes. The sole rejection before us for review is the Examiner’s rejection of claims 32 - 60 under 35 U.S.C. § 103(a) as being unpatentable over Gord (US 6,181,969, issued Jan. 30, 2001). DISCUSSION Upon consideration of the evidence on this record and each of Appellants’ contentions, we find that the preponderance of evidence on this record falls in favor of Appellants. As Appellants contend, it is well established that the Examiner’s proposed modification cannot render the prior art unsatisfactory for its intended purpose (App. Br. 26). See In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984); MPEP § 2143.05(V). Here, the Appeal 2011-010739 Application 11/177,503 3 purpose of Gord’s invention is to “provid[e] a programmable output current source for use within an implantable tissue or nerve stimulator ... that does not switch a current or voltage source between different electrode pairs” (Gord col. 2, ll. 35-38) in order to create a current stimulator that is smaller and operates at less power (see id. at col. 1, l. 57 to col. 2, l. 30). Gord expressly states that “the present invention advantageously eliminates the output switching matrix altogether, and provides a programmable current output circuit that leaves the electrode node permanently attached to a fixed location within the output circuit” (id. at col. 5, 11. 63-67). The Examiner’s proposal to modify the teachings of Gord with a distributed switching circuitry would require reconstructing the elements of Gord into a configuration that Gord expressly wanted to avoid. Such a modification would appear to render the operation of the device of Gord unsatisfactory for its intended purpose. SUMMARY We reverse the Examiner’s rejection of claims 32 - 60 under 35 U.S.C. § 103(a) as being unpatentable over Gord. REVERSED lp Copy with citationCopy as parenthetical citation