Ex Parte INUI et al

Patent Trial and Appeal Board

Aug 9, 2018

12570213 (P.T.A.B. Aug. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/570,213 09/30/2009
65565 7590 08/13/2018
SUGHRUE-265550
2100 PENNSYLVANIA AVE. NW
WASHINGTON, DC 20037-3213
FIRST NAMED INVENTOR
Koji INUI
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.
Ql 15210 9731
EXAMINER
BERTRAM, ERIC D
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
08/13/2018 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):
SUGHRUE265550@SUGHRUE.COM
PPROCESSING@SUGHRUE.COM
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KOJI INUI, Y ASUYUKI TAKE SHIMA,
JUN MOTOGI, YOSHINOBU ONO, TAKESHI KOJIMA,
RYOSUKE USHIJIMA, KATSUMI NAKAICHI, and
KAZUW A SHIBUYA
Appeal2017-000179
Application 12/570,213
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Koji Inui et al. ("Appellants") appeal under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 1--4, 6-15, 18, and 19, which are
all the pending claims. 1 An oral hearing pursuant to 37 C.F.R. § 41.47 was
held on August 2, 2018. We have jurisdiction under 35 U.S.C. § 6(b).
1 Inter-University Research Institute Corporation, National Institutes of
Natural Sciences and Nihon Kohden Corproation are identified as the real
parties in interest. Appeal Br. 2.
Appeal2017-000179
Application 12/570,213
We AFFIRM.
THE CLAIMED SUBJECT MATTER
Independent claim 1, reproduced below, is illustrative of the claimed
subject matter.
1. A pain sensory nerve stimulation apparatus comprising:
an electrode portion including:
a first electrode, a tip end of which is adapted to be
inserted into a skin; and
at least one second electrode which is disposed in a
circumference of the first electrode without being electrically
conductive with the first electrode, and which is adapted to be
in contact with a skin;
a pulse signal supplier, supplying a pulse signal in which
an electrical polarity of the first electrode is set as an anode and
an electrical polarity of the second electrode is set as a cathode;
and
a stimulation intensity controller configured to deliver
stimulation parameters to the first electrode and the second
electrode which stimulate AB fibers, Ao fibers, and C fibers
independently.
REJECTION2
Claims 1--4, 6-15, 18, and 19 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
2 The Examiner withdrew a rejection of claims 1--4, 6-15, 18, and 19 under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement. Ans. 3; Final Act. 4.
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Application 12/570,213
DISCUSSION
Appellants argue claims 1--4, 6-15, 18, and 19 as a group. Appeal Br.
8-13. We select claim 1 as representative and claims 2--4, 6-15, 18, and 19
stand or fall with claim 1. 37 C.F.R. § 41.37 (c)(l)(iv).
The Examiner rejects claim 1 based on the determination that the
limitation "AB fibers, Ao fibers, and C fibers are stimulated independently ..
. is not disclosed in the original specification." Final Act. 4. The Examiner
explains that Appellants' Specification merely discloses "stimulating Ao
fibers and C fibers independently." Id.; see Spec. ,r,r 10, 78-79. Further,
according to the Examiner, "[ w ]hile there is disclosure of stimulating AB
fibers, the original specification is silent as to this stimulation specifically
being done independently from stimulating Ao fibers and C fibers." Id.
Appellants contend that there is sufficient written description support
for the claims in the original specification "because (1) selectively
stimulating AB fibers relating to tactile sensations using a surface electrode
was known at the time of Appellant's invention and (2) Appellant's device is
configured with a surface electrode inherently capable of performing the
selective stimulation." Appeal Br. 8. In support of this contention,
Appellants direct us to the portion of the Specification where Japanese
Patent 3,543,097 (hereinafter "the Japanese Patent") is discussed. Id. at 11.
According to Appellants, the Japanese Patent discloses "specific tactile
sensory receptors are selectively stimulated by using a surface electrode.
As such, AB fibers are selectively stimulated in the state of the art before
Appellant's invention." Id. (citing Declaration of Jun Motogi under 37
C.F.R. § 1.132 dated October 28, 2015 (hereinafter "Motogi Declaration").
Appellants further argue that "before Appellant's invention it was known to
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Application 12/570,213
stimulate only AB fibers before Ao and C fibers, but it was not possible to
stimulate Ao and C fibers independently." Id. According to Appellants,
merely because the present invention provides for stimulating Ao and C
fibers independently, "the ability to selectively stimulate AP fibers
relating to tactile sensations is not lost with Appellant's improved
device." Id. Appellants also contend that their "device includes the
structure which provides this function." Id. at 13.
The Examiner responds that even if "appellant's device may include
'a surface electrode inherently capable of performing the selective
stimulation'[, that] does not meet the claim limitation of a 'controller
configured' to perform the selective stimulation." Ans. 3. The Examiner
explains that the Specification discloses that
the surface electrode can be set as a cathode and that the
polarity of the first and second electrode may be
switched/converted for the explicit purpose of selectively
stimulating Ao fibers and C fibers. There is no discussion of
the surface electrode of the current invention being used to
stimulate AB fibers independently.
Id. at4 (citing Spec. 6:20-22, 8:1-5, 34:13-17, 35:19-25, 36:4--8). With
respect to the Japanese Patent, the Examiner asserts that "it is silent as to 'a
stimulation intensity controller configured to deliver stimulation parameters
to the first electrode and the second electrode which stimulate AB fibers, Ao
fibers, and C fibers independently."' Id. The Examiner also notes that the
Specification does not explain "how the teachings of the [Japanese Patent]
would be used in the current invention." Id.
In the Reply Brief, Appellants argue that the Specification
discloses the controller controls both a needle electrode 31 and
a contact electrode 32, and since it has been established that the
contact (surface) electrode can stimulate only AB fibers in the
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Application 12/570,213
state of the art, it clearly follows that the controller that controls
the contact electrode would be inherently capable of controlling
the contact electrode to stimulate only AB fibers.
Reply Br. 6. For the following reasons, we sustain the rejection of claim 1.
To satisfy the written description requirement of the first paragraph of
35 U.S.C. § 112, a specification must describe the claimed invention in
sufficient detail that one skilled in the art can reasonably conclude that the
inventor had possession of the claimed invention. Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991). Specifically, the
specification must describe the claimed invention in a manner
understandable to a person of ordinary skill in the art and show that the
inventor actually invented the claimed invention. Id.; Ariad Pharms., Inc. v.
Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). In addition,
the specification must "demonstrate that the patentee possessed the full
scope of the invention recited in [the] claim." LizardTech, Inc. v. Earth
Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). "The
primary consideration is factual and depends on the nature of the invention
and the amount of knowledge imparted to those skilled in the art by the
disclosure." In re Wertheim, 541 F.2d 257,262 (CCPA 1976).
Appellants' Specification describes various means by which a
stimulation intensity controller can be configured to stimulate Ao fibers
independently of C fibers. For example, the Specification describes that "a
square wave is suitable for Ao fiber stimulation, and a triangular or sawtooth
wave is suitable for C fiber stimulation." Spec. 31 :3-5; see also id. at 24: 1-
17 ( discussing that AB fibers are not stimulated by stimulation of C fibers).
However, as the Examiner correctly notes, the Specification does not
explicitly describe how the teachings of the prior art device in the Japanese
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Patent would be used to configure the stimulation intensity controller of
Appellants' claimed invention so that AB fibers are stimulated independently
of Ao fibers and C fibers. Thus, resolution of the present appeal depends on
whether one of ordinary skill in the art would discern from the Specification
and the knowledge possessed by one of ordinary skill in the art that
Appellants possessed the full scope of the invention recited in claim 1.
In connection with the Japanese Patent, Appellants' Specification
states that when the AB fibers are stimulated with the prior art device, "Ao
fibers and C fibers which relate to the pain sensations are small fibers, and
hence stimulation is hardly performed." Spec. 5:7-8. Appellants also
submit the Motogi Declaration, describing the disclosure of the Japanese
Patent as follows:
As discussed in the originally filed application, in
Japanese Patent 3,543,097, specific tactile sensory receptors are
selectively stimulated by using a surface electrode. Meanwhile,
the thinner Ao and C fibers are hardly stimulated using the
surface electrode.
Motogi Deel. 2 ( emphasis added).
Neither the Specification ("stimulation is hardly performed") nor the
Motogi Declaration ("Ao and C fibers are hardly stimulated") provides
support that the AB fibers are stimulated independently of Ao fibers and C
fibers in the prior art apparatus. These statements suggest that the Ao and C
fibers are indeed stimulated when the AB fibers are stimulated, albeit to a
much lesser extent. Therefore, Appellants' contention that the claims are
supported by the written description because "the contact (surface) electrode
can stimulate only AB fibers in the state of the art" is not supported by
evidence. Reply Br. 6.
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Appellants also direct us to several portions of the Specification that
allegedly describe the claimed stimulation intensity controller. Appeal Br. 4
(citing Spec. 12:17-21, 15:6-14, 17:14--18:2, 29:1-9, 35:3---6, 36:1-11, Figs.
1, 3). Of these cited portions, only those at pages 29 and 36 even mention
AB fiber stimulation. At page 29, the Specification states that the order of
excitability in the prior art device is "(AB, Ao, and C)." Id. 29:4---6. As
discussed above, neither the Specification nor the Motogi Declaration
supports a finding that AB fibers are stimulated independently of Ao and C
fibers in the prior art apparatus. Therefore, the order of excitability of fibers
achieved with the prior art apparatus does not persuade us that claim 1
complies with the written description requirement.
Page 36 of the Specification provides that "Ao fibers and AB fibers
which are larger nerve fibers can be stimulated by changing at least one of
the voltage and current of the pulse signal to change the stimulation
intensity." Id. at 36: 1-5. While this portion of the Specification states that
AB fibers and Ao are stimulated by different intensities of the stimulation
pulse, the Specification does not state that the stimulation of AB fibers is
effected independently of Ao fibers, or that when the stimulation intensity is
changed, only one of type of fiber will be stimulated after the change.
We have considered all of Appellants' arguments, the Specification in
its entirety, and the evidence presented by Appellants concerning the
knowledge possessed by one of ordinary skill in the art at the time of
Appellants' invention. For the foregoing reasons, we agree with the
Examiner that the claims do not comply with the written description
requirement of 35 U.S.C. § 112, first paragraph, because one of ordinary
skill in the art would not reasonably understand that, at the time the
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application was filed, Appellants possessed the full scope of the invention
recited in claim 1, i.e., a stimulation intensity controller configured to
stimulate AB fibers independently of Ao and C fibers. Therefore, we sustain
the rejection of claim 1. Claims 2--4, 6-15, 18, and 19 fall with claim 1.
DECISION
The Examiner's decision rejecting claims 1--4, 6-15, 18, and 19 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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