Ex Parte Kothandaraman

Patent Trial and Appeal Board

Jun 17, 2016

13292989 (P.T.A.B. Jun. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/292,989 11/09/2011 Sridhar Kothandaraman
45458 7590 06/21/2016
SCHWEGMAN LUNDBERG & WOESSNER/BSC
POBOX2938
MINNEAPOLIS, MN 55402
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.
6279.098US 1 7223
EXAMINER
D ABREU, MICHAEL JOSEPH
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
06/21/2016 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):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SRIDHAR KOTHANDARAMAN
Appeal2014-003956
Application 13/292,989 1
Technology Center 3700
Before ANNETTE R. REIMERS, JEREMY M. PLENZLER, and
THOMAS F. SMEGAL, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
Final Decision rejecting claims 1-20 under 35 U.S.C. § 102(b) as being
anticipated by Fox (US Pat. No. 6,308,099, iss. Oct. 23, 2001). We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE and enter a NEW GROUND OF REJECTION in
accordance with 37 C.F.R. § 41.50(b).
1 Appellants identify Boston Scientific Neuromodulation Corporation as the
real party in interest. App. Br. 2.
Appeal2014-003956
Application 13/292,989
CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim2, and is reproduced below:
1. An external control device for use with a plurality of
different types of programmable neurostimulators respectively
having different numerical ranges for the same parameter,
compnsmg:
memory storing a software package
selectively reconfigured to program
neurostimulators;
capable of being
each of the
input circuitry configured for receiving information from
one of the neurostimulators identifying a type of the one
neurostimulator; and
processing circuitry configured for identifying the type of
the one neurostimulator based on the information received by the
input circuitry and for configuring the software package, to
program the one neurostimulator in accordance with the
numerical range of the parameter corresponding to the identified
type of the one neurostimulator.
OPfNION
Anticipation by Fox
Claim 1 is directed to "[a Jn external control device for use with a
plurality of different types of programmable neurostimulators" and requires
"memory storing a software package capable of being selectively
reconfigured to program each of the neurostimulators." Accordingly, the
2 Claims 9 and 14 were originally filed as independent claims. In an
amendment filed on December 27, 2012 in response to an election/restriction
requirement, Appellant indicated that "[ w ]ith entry of this amendment,
withdrawn claims 9--20 depend from elected independent claim 1." In the
subsequent non-final action issued on January 16, 2013, the Examiner
acknowledged that "claims 9-20 have been amended to be dependent on
independent claim 1."
2
Appeal2014-003956
Application 13/292,989
software must be reconfigurable to program at least two different types of
neurostimulators.
The Examiner finds that Fox discloses this limitation. Final Act. 2
(citing Fox, 5: 17-20, 6:65-7:24, Fig. 3). The Examiner explains that "Fox
clearly indicates that the programming device of the prior art is capable of
interacting with a plurality of different types of implantable devices,
including ICDs, nerve stimulators and drug delivery devices - otherwise
there would be no purpose in even mentioning these different options (e.g.
Col 5, lines 10-20)." Id. at 4. Appellant disputes the Examiner's finding
that Fox discloses its device having the "software package capable of being
selectively reconfigured to program each of the neurostimulators" recited in
the claims. App. Br. 4--8.
The cited portions of Fox explain that its programming device
"applies to implantable cardioverter/defibrillators (ICD's), nerve stimulators,
drug delivery devices, or any other implantable device which may have
programmable configuration parameters set by a programming device."
Fox, 5: 16-20. As Appellant points out, this is not the same as "a software
package used in the programming device 110 of Fox be[ing] capable of
being selectively reconfigured to program each of a variety of
neurostimulator types." App. Br. 6. The cited portion of column 5 from Fox
explains that the "invention applies to ... implantable device[ s] which may
have programmable configuration parameters set by a programming device,"
but says nothing about how it applies. See Fox, 5: 10-20. And more
specifically, this portion of Fox is silent as to any software package being
capable of being selectively reconfigured to program each of the implantable
devices.
3
Appeal2014-003956
Application 13/292,989
The additional citations to Fox also fail to cure this deficiency. See
Fox, 6:65-7:24, Fig. 3. The Examiner provides no explanation as to how
these additional portions of Fox disclose the limitation at issue, and our
reading of those portions of Fox also fails to reveal the disclosure of that
limitation.
The Examiner appears to take the position that the recitation of the
specific software in the claim is irrelevant, because "as long as Fox has a
memory for storing programming instructions, then it is necessarily capable
of being selectively reconfigured for different neurostimulators." Final Act.
5. That is incorrect. See Nazomi Commc 'ns, Inc. v. Nokia Corp., 739 F.3d
1339, 1345--47 (Fed. Cir. 2014); Typhoon Touch Techs., Inc. v. Dell, Inc.,
659 F.3d 1376, 1380-81 (Fed. Cir. 2011). The claim does not simply recite
memory. Rather, the claim recites memory storing a software package, and
that the software package is "capable of being selectively reconfigured to
program each of a variety of neurostimulator types."
For these reasons, the Examiner has failed to establish that Fox
discloses each limitation from claim 1. Claims 2-20 depend from claim 1
and the rejection of those claims suffers from the same deficiency set forth
above. Accordingly, we do not sustain the Examiner's decision to reject
claims 1-20 under 35 U.S.C. § 103.
New Ground - Indefiniteness
Pursuant to our authority under 37 C.F.R. § 41.50(b ), we reject claims
14--20 under 35 U.S.C. § 112 i-f 2 as being indefinite.
As noted above, Appellant and the Examiner consider claim 14 to
depend from claim 9, and ultimately from claim 1. Claim 9 recites a system
and claim 14 is directed to a method. "Claims in dependent form shall be
4
Appeal2014-003956
Application 13/292,989
construed to include all the limitations of the claim incorporated by
reference into the dependent claim." 37 C.F.R. § 1.75(c). Accordingly,
claim 14 is directed to both a system and a method. Claims 15-20 depend
from claim 14 and, therefore, also are directed to both a system and a
method.
Hybrid claims, i.e., claims drawn to both a system and a method for
using that system, are indefinite under 35 U.S.C. § 112 i-f 2. IPXL Holdings,
LLC v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (a claim to
"both a system and the method for using that system ... does not apprise a
person of ordinary skill in the art of its scope, and it is invalid" under 3 5
U.S.C. § 112, second paragraph).
Because each of claims 14--20 is a hybrid claim drawn to a system, as
well as a method of using such a system, those claims are indefinite under 35
U.S.C. § 112 i-f 2.
DECISION
We REVERSE the Examiner's decision to reject claims 1-20 as
obvious under 35 U.S.C. § 103(a).
We also enter a NEW GROUND OF REJECTION of claims 14--20
on the basis that these claims are indefinite under 35 U.S.C. § 112 i-f 2.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
5
Appeal2014-003956
Application 13/292,989
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner ...
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record ...
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure §1214.01.
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).
REVERSED; 37 C.F.R. § 41.50(b)
6