Ex Parte Lee et al

Patent Trial and Appeal Board

Feb 22, 2017

12821005 (P.T.A.B. Feb. 22, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/821,005 06/22/2010 Dongchul Lee 6279.053US1 3153
45458 7590 02/24/2017
smwfPtMan t t tndrf.ro & wofnnnfr/rnf EXAMINER
PO BOX 2938 DINGA, ROLAND
MINNEAPOLIS, MN 55402
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
02/24/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEE DONGCHUL, KERRY BRADLEY, and
DAVID K.L. PETERSON
Appeal 2015-001602
Application 12/821,005
Technology Center 3700
Before LYNNE H. BROWNE, MICHELLE R. OSINSKI, and
NATHAN A. ENGELS, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Lee Dongchul et al. (Appellants)1 appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1—16 under 35 U.S.C. § 103(a) as
unpatentable over Bradley (US 2007/0142863 Al, pub. June 21, 2007) and
Boveja (US 7,444,184, iss. Oct. 28, 2008). Final Act. 4—7. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Boston Scientific
Neuromodulation Corporation. Appeal Br. 2.
Appeal 2015-001602
Application 12/821,005
THE CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below and is
representative of the claimed subject matter on appeal.
1, A method of providing therapy to a patient using a plurality
of electrodes located adjacent a target neural tissue region having
a first nerve fiber having a first diameter and a second nerve fiber
having a second diameter greater than the first diameter, the
method comprising:
sourcing electrical current from two local anodes of the
electrodes into die target neural tissue region;
therapeutically sinking a first portion of the electrical
current from the target neural tissue region into at least one local
cathode of the electrodes, the two local anodes flanking the at
least one local cathode, wherein the first nerve fiber is located a
first distance from a. geometric center of die at least one local
cathode, and the second nerve fiber is located a second distance
from the geometric center of the at least one local cathode, and
wherein the second distance is equal to or less than the first
distance; and
sinking a second portion of the electrical current into at
least one cathode remote from the target neural tissue region;
wherein a ratio of the sourced electrical current over the
first sunk, electrical current portion has a value that allows the
first nerve fiber to be recruited by the electrical current while
preventing the second nerve fiber from being recruited by the
electrical current.
OPINION
Appellants argue claims 1—16 as a group. Appeal Br. 3—9. We select
claim 1 as the representative claim, and claims 2—16 stand or fall therewith.
37 C.F.R. § 41.37(c)( 1 )(iv)(2014).
Independent claim 1 is directed to a method of providing therapy
using a plurality of electrodes located adjacent a target neural tissue region
having a first nerve fiber with a first diameter and a second nerve fiber with
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Application 12/821,005
a second diameter greater than the first diameter. Appeal Br. 10 (Claims
App.). The Examiner relies on Bradley for teaching most of the limitations
of independent claim 1, including, inter alia, that Bradley’s first nerve fiber
FB2 is located a first distance from a geometric center of a local cathode of
the electrodes and Bradley’s second nerve fiber FBI is located a second
distance from the geometric center of the local cathode of the electrodes,
where the second distance is equal to or less than the first distance. Final
Act. 5 (citing Bradley, Figs. 1, 3, 10—17; 7—8, 33, 36, 44, 49-51, 55). The
Examiner also relies on Bradley for teaching, inter alia, that a ratio of
sourced electrical current (from two local anodes) over a first sunk electrical
current portion (to a local cathode) has a value that allows first nerve fiber
FB2 to be recruited by the electrical current while preventing second nerve
fiber FBI from being recruited by the electrical current. Id. The Examiner
acknowledges that Bradley fails to specifically disclose that the diameter of
first nerve fiber FB2 is greater than the diameter of second nerve fiber FBI.
Id.
The Examiner finds that “Boveja explicitly discloses stimulating
smaller diameter C fibers while blocking larger A and B fibers.” Ans. 3
(citing Boveja, 28:38—60).2 The Examiner “considers] ‘blocking’ and
‘preventing recruitment’ to be equivalent concepts, in that both stop
2 We note that this position was clarified in the Answer. In the Final
Action, the Examiner instead finds that “Boveja teaches the second nerve
fiber diameter, A a fiber diameter, greater than the first nerve fiber diameter,
Af fiber diameter A Id. (citing Boveja, Abstr., Figs. 2, 47 A—F, 5:7—25,
28:38—60). In the Final Action, the Examiner concludes that it would have
been obvious to one of ordinary skill in the art “to stimulate Ap fibers while
blocking Aa fibers” in order to “yield the predictable result of providing
precise selective stimulation of desired neural tissue.” Id. at 5—6.
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Application 12/821,005
propagation of action potentials down a nerve fiber.” Id. The Examiner
takes the position that Boveja teaches “a technique of stimulating nerve
fibers of smaller diameters preferentially to nerve fibers of larger diameters.”
Id. at 4 (citing Boveja, 28:38—60). The Examiner concludes that it would
have been obvious “to use the algorithm utilized by Boveja to achieve
activation of smaller nerve fibers while preventing activation of larger nerve
fibers in the device of Bradley to provide precise selective stimulation of
desired neural tissue.” Id.
Appellants first argue that “Boveja teaches blocking—not preventing
recruitment—of larger diameter nerve fibers.” Appeal Br. 5. We are not
persuaded by this argument of Examiner error. The Examiner relies on
Bradley for the concept of allowing first nerve fiber FB2 to be recruited by
the electrical current, while preventing second nerve fiber FBI from being
recruited by the electrical current. Final Act. 5; see also Bradley, Figs. 12,
13; 49, 53, 59. In other words, Bradley’s method already relates to
preventing recruitment of nerve fibers. The Examiner turns to Boveja only
to explain why first nerve fiber FB2 would be smaller than second nerve
fiber FBI, with Boveja teaching different fiber diameters and preferential
stimulation of smaller nerves compared to larger nerves. See Ans. 4 (citing
Boveja, Fig. 2; 28:38—60). Even assuming arguendo that “blocking” is
different than “preventing recruitment” and that Boveja only teaches
preferential stimulation through “blocking,” Boveja still broadly teaches the
preferential stimulation of smaller nerves relative to larger nerves so as to
adequately explain why Bradley’s first nerve fiber FB2 would be smaller
than Bradley’s second nerve fiber FBI when utilizing Bradley’s
technique/regimen.
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Appeal 2015-001602
Application 12/821,005
Appellants next argue that “the Examiner has cited no disclosure in
Boveja regarding the distance between the larger diameter nerve fiber and
whatever the Examiner considers to be the geometric center of the local
cathode(s) relative to the distance between the smaller diameter nerve fiber
and the geometric center of the local cathode(s).” Appeal Br. 5. We are not
persuaded by this argument of Examiner error. The Examiner relies on
Bradley, not Boveja, to teach the relative distances of the first and second
nerve fibers FB2, FBI to the geometric center of the local cathodes. Final
Act. 5; Ans. 3.
Third, Appellants argue that “the Examiner has not explained how the
Bradley technique would be specifically modified in view of the nerve
blocking technique disclosed in Boveja.” Appeal Br. 5. Appellants continue
that “it is not even known how a nerve blocking technique is even remotely
relevant to selecting the value of the ratio of the sourced electrical current
over the first sunk electrical current portion of the Bradley technique.” Id. at
6. Appellants relatedly argue that one of ordinary skill in the art would not
be led to “modify the Bradley stimulation regimen, such that a ratio of the
sourced electrical current over the first sunk electrical current portion has a
value that allows the [smaller and equidistant or further] nerve fiber to be
recruited by the electrical current while preventing the [larger and
equidistant or closer] nerve fiber from being recruited by the electrical
current.” Reply Br. 5. We are not persuaded by these arguments of
Examiner error.
The Examiner has clarified that the Office relies on “the disclosure of
Bradley in Figures 10-17 to provide varying ratios of current to achieve
varying results.” Ans. 6. More particularly, the Examiner has made specific
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Application 12/821,005
findings that Bradley discloses “[sjourced electrical current at 100% divided
by first sunk electrical current of 40% yields a ratio of 2.5.” Final Act. 6
(citing Bradley, Figs. 15, 16); see also Bradley, Fig. 12 (also disclosing the
same). Accordingly, Bradley itself already discloses the selection of a value
for the ratio of sourced electrical current over the first sunk electrical current
portion (i.e., 2.5) that corresponds to a ratio (i.e., at least 2.4) that has been
claimed as allowing the first (smaller and equidistant or further) nerve fiber
to be recruited by the electrical current while preventing the second (larger
and equidistant or closer) nerve fiber from being recruited by the electrical
current. In other words, the Examiner is not modifying the Bradley
technique/regimen so as to select a different value of the ratio of sourced
electrical current over the first sunk electrical current or so as to incorporate
aspects of Boveja’s specific nerve blocking technique.
Rather, the Examiner clarifies that Boveja “is relied upon only to
teach specific fiber diameters (Fig. 2) and a technique of stimulating nerve
fibers of smaller diameters preferentially to nerve fibers of larger diameters
(Col. 28,11. 38—60).” Ans. 4 (emphasis added). The Examiner reasons that
one of ordinary skill in the art would use Bradley’s technique/regimen in
which first nerve fiber FB2 would be recruited by electrical current and
second nerve fiber FB1 would be prevented from being recruited by the
electrical current, with first nerve fiber FB2 being smaller than second nerve
fiber FBI to “provide precise selective stimulation of desired neural tissue.”
Id. In other words, Boveja merely adds that, when using Bradley’s ratio
associated with Figures 12 and 16, for example, the fibers of fiber bundle
FBI in which action potentials (APs) are blocked (Bradley, Tflf 49, 53, 59)
may preferentially be larger diameter fibers, and the fibers of fiber bundle
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FB2 in which APs are generated (id.) may preferentially be smaller diameter
fibers. See Ans. 6 (“The Office relied on Boveja to teach the relative sizes
of the fiber bundles being stimulated (Fig. 2). Boveja explicitly discloses
stimulating smaller diameter C fibers while blocking larger A and B fibers
(Col. 28,11. 38-60).”).
Appellants acknowledge that “Bradley discloses the physical
electrode arrangement of the claimed invention, and inherently discloses
some current ratio that would recruit some nerve fibers and prevent
recruitment of other nerve fibers.” Appeal Br. 7. Appellants assert,
however, that “there is no disclosure in Bradley as to how to reverse the
normal recruitment order of large nerve fibers versus small nerve fibers.”
Id.; see also Reply Br. 6 (“The Examiner has clearly derived the solution of
reversing the recruitment order of nerve fibers directly from the claimed
invention, and [not] based on the disclosures of Bradley and Boveja, which
have nothing to do with reversing the recruitment order of nerve fibers.”).
It is irrelevant, however, whether Bradley recognized that its disclosed
ratio was capable of reversing the normal recruitment order of larger nerve
fibers versus small nerve fibers, considering that the Examiner’s finding that
Bradley discloses a ratio (i.e., 2.5) that is substantially similar to a ratio (i.e.,
at least 2.4) that has been claimed as allowing a first (smaller and equidistant
or further) nerve fiber to be recruited by electrical current while preventing a
second (larger and equidistant or closer) nerve fiber from being recruited by
electrical current, reasonably supports the inherency of such a reversed
recruitment order. See Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342,
1348—49 (Fed. Cir. 1999) (“Because ‘sufficient aeration’ was inherent in the
prior art, it is irrelevant that the prior art did not recognize the key aspect of
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Application 12/821,005
[the] invention. . . . An inherent structure, composition, or function is not
necessarily known.”).
For the foregoing reasons, we are not persuaded that the Examiner
erred in concluding that the combination of Bradley and Boveja renders
obvious the subject matter of independent claim 1, and we sustain the
rejection of independent claim 1 under 35 U.S.C. § 103(a) as unpatentable
over Bradley and Boveja. We also sustain the rejection of claims 2—16
which fall with the independent claim.
DECISION
The Examiner’s decision to reject claims 1—16 under 35 U.S.C.
§ 103(a) as unpatentable over Bradley and Boveja 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)(l)(iv).
AFFIRMED
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