Ex Parte Lane et alDownload PDFPatent Trial and Appeal BoardFeb 25, 201612976658 (P.T.A.B. Feb. 25, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/976,658 12/22/2010 Courtney Lane 42074 7590 02/29/2016 Faegre Baker Daniels LLP PATENT DOCKETING - INTELLECTUAL PROPERTY (32469) 2200 WELLS FARGO CENTER 90 SOUTH SEVENTH STREET MINNEAPOLIS, MN 55402-3901 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. 432469 001194 7861 EXAMINER MORALES, JON ERIC C ART UNIT PAPER NUMBER 3766 NOTIFICATION DATE DELIVERY MODE 02/29/2016 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): PatentDocketing@FaegreBD.com e-OfficeActionBSC@FaegreBD.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte COURTNEY LANE, RAFAEL CARBUNARU, DAVID K.L. PETERSON, and ANDREW DIGIORE Appeal2014-001553 Application 12/976,658 Technology Center 3700 Before MICHAEL L. HOELTER, FRANCES L. IPPOLITO, and LISA M. GUIJT, Administrative Patent Judges. IPPOLITO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final decision rejecting claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. Appeal2014-001553 Application 12/976,658 CLAIMED SUBJECT MATTER Claims 1 and 10, reproduced below, are illustrative of the claimed subject matter. 1. A neurostimulation system for use with a patient suffering from a symptom of a disease that latently responds to electrical stimulation therapy, comprising: at least one electrical terminal to which at least one electrode can be coupled; output stimulation circuitry coupled to the at least one electrical terminal; memory storing a plurality of predetermined periods of time estimated for a plurality of symptoms to resolve in response to electrical stimulation therapy; and control circuitry configured for allowing selection of one of the predetermined periods of time, controlling the output stimulation circuitry to convey first electrical stimulation energy to or from the at least one electrical terminal in accordance with a first set of stimulation parameters, waiting the selected predetermined period of time, and conveying second electrical stimulation energy to or from the tissue region in accordance with a second set of stimulation parameters different from the first set of stimulation parameters. 10. A method of providing therapy to a patient suffering from a symptom of a disease that latently responds to electrical stimulation therapy, comprising: conveying first electrical stimulation energy to or from a tissue region of the patient in accordance with a first set of stimulation parameters, thereby affecting the symptom; waiting a predetermined period of time estimated for the symptom to resolve in response to electrical stimulation therapy; and conveying second electrical stimulation energy to or from the tissue region in accordance with a second set of stimulation parameters different from the first set of stimulation parameters. 2 Appeal2014-001553 Application 12/976,658 REJECTIONS I. Claims 1--4, 10-15, and 20-22 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Goetz (U.S. Patent Publication No. 2006/2059099 Al, pub. Nov. 16, 2006). II. Claims 5-9 and 16-19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Goetz. ANALYSIS Rejection I Independent claim 1 is directed to a neurostimulation system that includes a "memory storing a plurality of predetermined periods of time estimated for a plurality of symptoms to resolve in response to electrical stimulation therapy," and "control circuitry configured for allowing selection of one of the predetermined periods of time . .. [and] waiting the selected predetermined period of time." Emphasis added. Similarly, claim 10 recites a method that includes the step of "waiting a predetermined period of tinze estinzated for the symptonz to resolve in response to electrical stimulation therapy." Emphasis added. For these limitations, the Examiner asserts that Goetz teaches, in paragraphs 3, 17, 131, 164, 169, and 174, a plurality of predetermined periods of time 190 estimated for a plurality of symptoms 99 to resolve in response to electrical stimulation therapy. Ans. 2. The Examiner further asserts that Goetz discloses the first electrode combo performs interleaved stimulation based upon a symptom using predetermined increments of time (250 ms - p[Ol 72]), then begins to fade/end when the next electrode combination output levels reach a particular threshold. The next electrode combo starts a period of stimulation for a following symptom with different stimulation parameters (fig. 14, Section 0171-0175). 3 Appeal2014-001553 Application 12/976,658 Ans. 5. The Examiner adds that Goetz's control circuitry 84 is configured for allowing selection of one of the predetermined periods of time and waiting the selected predetermined period of time. Id. (citing Goetz i-fi-1 77, 121, 131, 149, 164, 169, 205). Id. at 2-3. Appellants argue that although there are predetermined periods of time disclosed in Goetz, there is no disclosure that these time periods are "an estimated time for the respective symptom 99 to resolve in response to electrical stimulation energy." Appeal Br. 5; Reply Br. 1-2. Specifically, Appellants assert there is no disclosure in Goetz that ( 1) timing diagram 190 for electrode combinations 192A-102C teaches an estimated time for respective symptom 99 to resolve; (2) the 250 millisecond period of time disclosed in paragraph 1 72 is estimated for any symptom to resolve in response to applied electrical stimulation; and (3) the symptoms "fade/end" (or are resolved) when the next electrode combination output levels reach a particular threshold. Id. Based upon the record before us, Appellants' arguments are persuasive. Goetz discloses an electrical stimulator that provides a plurality of electrodes that are used in varying combinations to deliver electrical stimulation to a user. Goetz i-fi-f 17, 164. Referring to Figure 13, Goetz teaches that timing diagram 190 illustrates the testing of three electrode combinations 192A, 192B, and 192C. Id. In operation, when the amplitude of electrode combination 192A is increased until it reaches target amplitude TAI, programmer 11 turns on electrode combination 192B and "incrementally decreases the amplitude of electrode combination 192A while concurrently incrementally increasing the amplitude of electrode combination 192B toward TAI." Id. i-f 167. With respect to Figure 14, 4 Appeal2014-001553 Application 12/976,658 Goetz discloses that timing diagram 200 "illustrates interleaving time slots containing one or more stimulation pulses delivered by different electrode combinations in order to provide a smooth shift [form]." Id. i-f 1 71. Goetz further discloses that the entire shift process in timing diagram 200 proceeds over a ten second interval with stimulation amplitudes interleaved every one-quarter of a second (i.e., 250 milliseconds). Id. i-f 172. In discussing timing diagram 190 and 200, the Examiner finds that the "10 sec. Intervals" and "250ms," described in paragraph 172 of Goetz, teach the recited predetermined time period. Ans. 5. The Examiner asserts that the shifting of electrode combinations in increments of time (e.g., 250 milliseconds) results in symptoms that "fade/ end when the next electrode combination output levels reach a particular threshold." Id. We agree with the Examiner that the disclosure of timing diagrams 190, 200 teaches predetermined time periods for shifting between electrode combinations. However, based on the record before us, the Examiner has not explained sufficiently how the ten second or 250 millisecond intervals teach time periods estimated for "fading," "ending," or resolving symptoms in response to electrical stimulation. We further note that paragraph 77 of Goetz discloses the assembly of individual stimulation programs into a program set to be delivered on a time-interleaved basis. However, we reiterate that the Examiner has not explained sufficiently how Goetz discloses that this time-interleaved delivery discloses a "fade/end [of a symptom] when the next electrode combination output levels reach a particular threshold." See Ans. 5. "[I]f a reference is ambiguous and can be interpreted so that it may or may not constitute an anticipation of an appellant's claims, an anticipation rejection 5 Appeal2014-001553 Application 12/976,658 under 35 U.S.C. 102 based upon the ambiguous reference is improper." Jn re Brink, 419 F.2d 914, 917 (CCPA 1970). Accordingly, we do not sustain the Examiner's decision rejecting claims 1 and 10 as being anticipated by Goetz. For the same reasons, we further do not sustain the Examiner's decision rejecting claims 2--4, 11-15, and 20-22, which depend from claims 1 and 10. Rejection II Claims 5-9 and 16-19 depend from independent claims 1 and 10 respectively. The Examiner finds that based on Goetz, it would have been obvious to one having ordinary skill in the art at the time the invention to "have predetermined periods of time [] equal to or greater than five seconds, one minute, five minutes, and one hour, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233." Ans. 4. The Examiner's findings with regard to this rejection do not cure the deficiencies discussed above for independent claims 1 and 10, from which claims 5-9 and 16-19 depend. Accordingly, we do not sustain the Examiner's decision rejecting claims 5-9 and 16-19. DECISION The Examiner's decision rejecting claims 1-22 is reversed. 6 Appeal2014-001553 Application 12/976,658 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). REVERSED 7 Copy with citationCopy as parenthetical citation