Ex Parte ImranDownload PDFPatent Trial and Appeal BoardAug 28, 201813917627 (P.T.A.B. Aug. 28, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/917,627 06/13/2013 Mir Imran 101799 7590 08/30/2018 Mahamedi IP Law LLP (ICUB) 910 Campisi Way, Suite IE Suite 600 Campbell, CA 95008 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. ICUB.P007D1Cl 9567 EXAMINER EV ANISKO, GEORGE ROBERT ART UNIT PAPER NUMBER 3762 NOTIFICATION DATE DELIVERY MODE 08/30/2018 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): uspto@m-iplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MIR IMRAN Appeal2017-007677 Application 13/917,627 Technology Center 3700 Before DONALD E. ADAMS, MICHAEL J. FITZPATRICK, and JOHN E. SCHNEIDER, Administrative Patent Judges. FITZPATRICK, Administrative Patent Judge. DECISION ON APPEAL Mir Imran ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from a decision finally rejecting claims 2-19, 22, and 23. Claims 1 and 20-21 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The real party in interest is identified as In Cube Labs. Appeal Br. 3. Appeal2017-007677 Application 13/917,627 STATEMENT OF THE CASE The Specification According to Appellant, the claimed invention relates to "detecting and treating epilepsy and other conditions characterized by aberrant neural- electric activity using implanted electrodes." Spec. i-f2. Some embodiments have "orthogonally oriented electrode members configured to be able to detect and locate the direction of aberrant neural- electric activity in the brain." Id. ,rs. "Desirably, the electrode members have a stiffness configured to be advanced into brain tissue and maintain their bent shape as well as the size and shape of the detection volume defined below." Id. ,IIO. "The bend of the electrode member is such that the exposed distal portions of the electrode member define a detection volume capable of determining the direction of a foci of epileptogenic or other aberrant neural-electric activity." Id. ,III. "Typically, the arrangement is orthogonal with the three electrodes projecting out of the introducer so as to define a three dimensional Cartesian coordinate system with the reference electrode positioned a distal end of the introducer or other location so as to be at the origin of the coordinate axis." Id. ,II2. The Rejected Claims Of the pending and finally rejected claims, claims 2 and 18 are independent. Appeal Br. 17-21. Claim 2 is representative and reads as follows, with a limitation critical to this decision, in italics: 2. An apparatus for detection of aberrant neural- electric activity in the brain, the apparatus comprising: an introducer configured to be introduced into brain tissue, having a proximal end configured to be coupled to an 2 Appeal2017-007677 Application 13/917,627 electrical connector, and a distal end including a plurality of lmnens with a port coupled to each lumen; and at least six electrode members individually extendable from the plurality of lumens, wherein three of the at least six electrode members form a group of electrode members which are extendable to define a Cartesian coordinate system with an origin at the distal end of the introducer; wherein each of the electrode members has an insulated proximal portion and an exposed distal portion, each electrode member having a nondeployed state and at least one deployed state in which the electrode member is extended, the distal portion of the electrode member having a bend when the electrode member is in the at least one deployed state; and wherein the at least six electrode members are extendable into corresponding deployed states in which the bends of the at least six electrode members are such that the exposed distal portions define a substantially conical shaped detection volume for determining a location of a foci of aberrant neural-electric activity within the brain relative to the deployed electrode members. Id. at 17. The Appealed Rejection (and Related Issues) The following rejection is before us for review: claims 2-19, 22, and 23 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement set forth in that statute. Final Act. 4. Additionally, and based on the same descriptive content in earlier applications (Nos. 12/359,830 and 13/301,584), the Examiner denied benefit under 35 U.S.C. § 120 to their filing dates. Final Act. 2-3. Further, the Examiner objected to the amendment filed July 24, 2015, as introducing new matter in the form of both text and drawings. Id. at 3. 3 Appeal2017-007677 Application 13/917,627 DISCUSSION The Examiner rejected all pending claims under 35 U.S.C. § 112(a). Final Act. 4. Section 112(a) states the following: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. 35 U.S.C. § 112(a). The rejection is based on the written description, not the enablement, requirement of§ 112(a). Final Act. 4; see also Lilly Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1344 (Fed. Cir. 2010) (holding that the written description of the invention and enablement of the invention are separate requirements of identically-worded predecessor statute, 35 U.S.C. § 112 ,II.). Specifically, the Examiner determined that "not described in the original specification is the use of at least 6 [electrode] members in a system extendable to define a substantially conical shaped detection volume, where 3 of the members are extendable to define a Cartesian coordinate system at the origin, in combination with the other elements in the claim(s)." Final Act. 4. Appellant argues that the Examiner misinterprets paragraph 46 of Specification. Appeal Br. 7. That paragraph states: Referring now to Figs. 6a, 6b, 7a, 7b, 8a, and 8b, one or more embodiments provide that electrode members 30 have a non-deployed state when positioned in the introducer (as is shown in Fig. 6a) and a deployed state when advanced out of the introducer as shown in Fig. 6b. In the deployed state, the electrode members have an orientation which can detect a foci 4 Appeal2017-007677 Application 13/917,627 F of aberrant neural-electric activity. In one embodiment, this is achieved by configuring the electrode members to have a substantially orthogonal orientation with respect to each other. More specifically, with respect to the longitudinal axis 301 of each electrode member, so that the angle 30a between electrode members is approximately 90° so as to define a three dimensional Cartesian coordinate axis system which corresponds to a detection volume DV as shown in the embodiments of Figs 7a and 7b. As will be discussed herein, this configuration allows the electrode members to measure voltages produced by an electric field EF generated by Foci F so as derive the electric field vector E including the direction and magnitude of the vector. For orthogonal orientations, the defined detection volume D V is substantially tetrahedral is shown in the embodiment of Fig. 7b. Other orientations defining other detection volumes DV are also contemplated such as various polyhedral shapes. For example, four electrode members can be configured to define a substantially pyramidal detection volume. Still additional numbers of electrode members such as six or more can be configured to define a detection volume which approaches a substantially conical shape. Spec ,I46 ( emphasis added). Specifically, Appellant argues that the Examiner binds the use of "Cartesian coordinates" to an embodiment in which the "electrode members . . . have a substantially orthogonal orientation with respect to each other." The Examiner errs by restricting the term "Cartesian coordinate" solely to the substantially orthogonal embodiment ( featuring three electrode members) to the exclusion of the substantially pyramidal (featuring four electrode members) or substantially conical (featuring six or more electrode members) embodiments. Appeal Br. 8-9. We are not persuaded by Appellant's arguments. It is clear that, although multiple embodiments are disclosed in paragraph 46, there is no discussion of mixing those embodiments. 5 Appeal2017-007677 Application 13/917,627 Spec. ,I46. Appellant fails to show that the Specification provide a written description of the mixture of embodiments being claimed. SUMMARY For the reasons discussed, we affirm the Examiner's rejection of claims 2-19, 22, and 23. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation