Ex Parte Leven et al

Patent Trial and Appeal Board

Nov 7, 2017

13864049 (P.T.A.B. Nov. 7, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
BSNC-1-282.1 1040
EXAMINER
PLATES KI, ERIN M
ART UNIT PAPER NUMBER
3766
MAIL DATE DELIVERY MODE
13/864,049 04/16/2013
50638 7590 11/08/2017
Boston Scientific Neuromodulation Corp.
c/o Lowe Graham Jones
701 Fifth Avenue
Suite 4800
Seattle, WA 98104
Jacob B. Leven
11/08/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACOB B. LEVEN, ANNE MARGARET PIANCA,
JOHN MICHAEL BARKER, GEOFFREY ABELLANA VILLARTA,
and MILAD GIRGIS
Appeal 2015-008139
Application 13/864,0491
Technology Center 3700
Before MICHAEL C. ASTORINO, KENNETH G. SCHOPFER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35U.S.C. § 134 from the Examiner’s
decision rejecting claims 10, 12—17, and 21—29. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellants, “[t]he real party in interest... is Boston
Scientific Neuromodulation Corporation.” Appeal Br. 2.
Appeal 2015-008139
Application 13/864,049
STATEMENT OF THE CASE
Claimed Subject Matter
Claim 10 is representative of the subject matter on appeal and is
reproduced below.
10. An electrical stimulation lead extending from a proximal end
to a distal end and having a circumference, the lead comprising:
an end conductor guide disposed at the proximal or distal
end of the lead, the end conductor guide having a first end, a
second end, a generally cylindrical shape, a length, and an
exterior surface, the end conductor guide defining a plurality of
conductor tracks formed in the exterior surface and extending
longitudinally from the first end at least partway along the length
of the end conductor guide, the end conductor guide further
defining protrusions between adjacent conductor tracks giving
the end conductor guide a cog-shaped cross-section at the first
end, wherein each of the conductor tracks extends a different
distance along the length of the end conductor guide;
a plurality of electrodes disposed along the distal end of
the lead, wherein each electrode is a cylindrical ring electrode
extending around the circumference of the lead;
a plurality of terminals disposed along the proximal end of
the lead, wherein each terminal is a cylindrical ring terminal
extending around the circumference of the lead, wherein the
plurality of terminals are disposed over the end conductor guide
when the end conductor guide is disposed at the proximal end of
the lead and the plurality of electrodes are disposed over the end
conductor guide when the end conductor guide is disposed at the
distal end of the lead;
an elongated lead body extending from the plurality of
electrodes to the plurality of terminals; and
a plurality of conductors coupling the plurality of
electrodes to the plurality of terminals, each of the conductors
comprising an end portion that is disposed within one of the
plurality of conductor tracks of the end conductor guide.
2
Appeal 2015-008139
Application 13/864,049
Rejections
Claims 10, 12—16, 21—24, and 28 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Staal et al. (US 2010/0298761 Al, pub.
Nov. 25, 2010) (“Staal”), Johnson et al. (US 2008/0004618 Al, pub. Jan. 3,
2008) (“Johnson”), and Barker (US 2009/0198312 Al, pub. Aug. 6, 2009).
Claims 17 and 29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Staal, Johnson, Barker, and Flowers et al.
(US 2009/0222073 Al, pub. Sept. 3, 2009) (“Flowers”).
Claims 25 and 27 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Staal, Johnson, Barker, and Doan (US 6,181,971 Bl, iss.
Jan. 30, 2001).
Claim 26 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Staal, Johnson, Barker, and Olsen et al. (US 2005/0222659 Al, pub.
Oct. 6, 2005) (“Olsen”).
ANALYSIS
The Examiner relies on Staal to teach “a plurality of electrodes
disposed along the distal end of the lead.” Final Act. 4 (citing (Staal, Figs.
12a, 12b, 1 60)). The Examiner finds that “Staal does not teach that each
electrode disposed along the distal end of the lead is a cylindrical ring
electrode extending around the circumference of the lead,” as required by
claim 10. Final Act. 5 (emphasis added). To remedy this deficiency, the
Examiner turns to Johnson’s teaching of “an electrode medical device with
ring electrodes.” Final Act. 5 (citing Johnson, Fig. 1,148 (describing
“electrode 104 may be fully or partially cylindrical, forming a ring stretching
3
Appeal 2015-008139
Application 13/864,049
partially or entirely around the circumference of the jacket [(i.e., outer
catheter layer)] 114”) (emphasis omitted)); see Johnson 142.
In combining the teachings of Staal and Johnson, the Examiner
concludes:
It would therefore have been obvious to one having ordinary skill
in the art to use a conductor guide such as Staal’s, with a guide
for each electrode, ending in ring electrodes, and in which each
of the conductor tracks extends a different distance along the
length of the end conductor guide, in order to provide more
stability to the electrode by not having gaps along the end of the
electrode, that is, lumina that are open after the place where the
conductor has ended.
Final Act. 5—6 (emphasis added). The Examiner also relies on the position
that “Staal’s multiple lumens may easily be combined with ring electrodes
. . . because these are features common in the art.” Ans. 13 (emphasis
added).
The Appellants argue that the Examiner’s rejection “picks and
chooses portions of the references [(i.e., Stall and Johnson)] and discards
disclosure that is inconvenient or inconsistent with the proposed
combination of individual pieces.” Appeal Br. 10; see Reply Br. 5. In
particular, the Appellants point out that Staal’s electrodes extend and retract
in electrode grooves 906 and outlets 905. See Appeal Br. 8. The Appellants
contend that the modification of Staal’s electrodes in view of Johnson’s ring
electrode “would prevent the electrodes from being extended [(i.e.,
advanced)] and retracted from the electrode grooves 906 and electrode
outlets 905 of Staal because the ring electrode of Johnson extends around the
entire circumference of the catheter/lead.” Appeal Br. 9; see Staal ^fl[ 11, 33,
4
Appeal 2015-008139
Application 13/864,049
95, Figs. 1 la—12b. We determine that the Appellants’ argument is
persuasive of Examiner error.
In this case, the reasons supporting the Examiner’s proposed
modification, i.e., “to provide more stability to the electrode” and that “these
are features common in the art,” fails to adequately support the Examiner’s
rejection. Even if we were to agree with the Examiner that the proposed
modification would have provided more stability to the electrodes, the
Examiner fails to adequately explain why Staal’s electroporation device
would benefit from having more stable electrodes. And, even if we were to
agree with the Examiner that the “features [are] common in the art,” the
Examiner nonetheless fails to adequately explain why one of ordinary skill
in the art would have modified Staal’s electroporation device to remove its
electrodes ability to retract and expand in the same or similar manner.
We also note the Examiner determines that under the same ground of
rejection different findings from the applied prior art references may still
properly reject the claims. See Ans. 13—14 (commenting generally on the
Johnson and Flowers references, and asserting that the order of references
may be reversed without changing the grounds for rejection). In this case,
however, the Examiner fails to set forth a proper prima facie case of
obviousness, because the Final Office Action and the Answer fail to provide
a rejection that includes adequate reasoning with rational underpinning for
another rationale using the same references. See In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds . . . [require]
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.”) (cited with approval in KSR Int 7 Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007)). Additionally, we note the
5
Appeal 2015-008139
Application 13/864,049
Examiner’s further modification of Staal’s electroporation device in view of
Barker’s teachings (see Final Act. 6) does not remedy the error discussed
above.
Thus, we do not sustain the Examiner’s rejection of claims 10, 12—16,
21—24, and 28 as unpatentable over Staal, Johnson, and Barker.
The remaining rejections based on Staal, Johnson, and Barker in
combination with Flowers, Doan, or Olsen rely on the same reasoning as
discussed above and are not remedied by the additional findings and
reasoning provided by the Examiner for each of the remaining rejections.
As such, we do not sustain the Examiner’s rejections under 35 U.S.C.
§ 103(a) of: claims 17 and 29 as unpatentable over Staal, Johnson, Barker,
and Flowers; claims 25 and 27 as unpatentable over Staal, Johnson, Barker,
and Doan; and claim 26 as unpatentable over Staal, Johnson, Barker, and
Olsen.
DECISION
We REVERSE the Examiner’s decision rejecting claims 10, 12—17,
and 21-29.
REVERSED
6