Ex Parte Lane et al

Patent Trial and Appeal Board

Feb 25, 2016

12976658 (P.T.A.B. Feb. 25, 2016)

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.
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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).
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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,
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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
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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.
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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
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