Ex Parte Libbus et al

Board of Patent Appeals and Interferences

Aug 13, 2012

10992319 (B.P.A.I. Aug. 13, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/992,319 11/18/2004 Imad Libbus 279.763US1 8248
7590 08/14/2012
Schwegman, Lundberg, Woessner & Kluth, P.A.
P.O. Box 2938
Minneapolis, MN 55402
EXAMINER
ALTER, ALYSSA MARGO
ART UNIT PAPER NUMBER
3762
MAIL DATE DELIVERY MODE
08/14/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte IMAD LIBBUS, ANDREW P. KRAMER,
and JULIA MOFFITT
____________

Appeal 2011-008252
Application 10/992,319
Technology Center 3700
____________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1-27 and 54-59
(App. Br. 4; Ans. 2). We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a device for delivering a closed-loop neural
stimulation therapy with neural response feedback to a desired neural target
in an autonomic nervous system to elicit a desired neural response. Claim1
Appeal 2011-008252
Application 10/992,319

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is representative and is reproduced in the Claims Appendix of Appellants’
Brief.
Claims 1-8 and 11-27 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Osorio.1
Claims 9, 10, and 25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Osorio.
Claims 54-59 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Osorio and Kieval.2
We reverse.
ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding or conclusion that Osorio alone or in combination
teaches or suggests Appellants’ claimed subject matter?
FACTUAL FINDINGS (FF)
FF 1. Examiner’s findings concerning the scope and content of the prior art
are set forth in the Answer (see Ans. 4-6); we provide the following findings
for emphasis.
FF 2. Examiner finds that since Osorio “detects a neural response as
feedback to the stimulation . . . [, wherein a] physician collects neurological
data and employs that data to adjust the detection algorithm[ ], Osorio . . .
uses detected neural response to the neural stimulation therapy as feedback”
(id. at 7).

1 Osorio et al., US 2004/0138517 A1, published July 15, 2004.
2 Kieval et al., US 6,073,048, issued June 6, 2000.
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Application 10/992,319

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FF 3. Examiner relies on Kieval to suggest “that it is well known to
stimulate the nervous system to provide a therapy for a cardiovascular
condition or heart failure, such as congestive heart failure” (id. at 6).
ANALYSIS
Appellants’ claimed invention requires, inter alia, a memory (see
claims 1 and 18).3 The memory of Appellants’ claimed device comprises
instructions to:
a. implement the closed-loop neural stimulation therapy;
b. use a detected neural response to the neural stimulation therapy as
feedback for the closed-loop neural stimulation therapy; and
c. modify the neural stimulation therapy based on the detected neural
response to provide the desired neural response to the neural stimulation
therapy (id. see also Reply Br. 2).
While Examiner finds that Osorio teaches and/or suggests that a
physician collects data and adjusts the detection algorithm; a “physician is
not part of . . . [Appellants’ claimed] device” (see Reply Br. 2; Cf. FF 2).
Further, Appellants explain that while Osorio’s
[T]herapy may be initiated when [a] disorder is detected (e.g.,
detected seizure activity causes the epilepsy therapy to be
delivered). There is no express or inherent showing in th[e]
section [of Osorio relied upon by Examiner] that the “closed-
loop control monitoring” of Osorio . . . refer[s] to sensing a
signal indicative of a sympathetic or parasympathetic neural
response to stimulating an autonomic neural target.

(App. Br. 19.) Examiner failed to establish an evidentiary basis on this
record to support a different conclusion (Cf. FF 2). In sum, Examiner failed

3 Claims 2-17, 19-27, and 54-59 depend directly or indirectly from claim 1
or 18.
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Application 10/992,319

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to establish, through a preponderance of evidence on this record, that Osorio
teaches and/or suggests a device that (a) detects a neural response to neural
stimulation therapy and (b) modifies the neural stimulation therapy based on
the detected neural response.
Examiner’s reliance on Kieval to suggest “that it is well known to
stimulate the nervous system to provide a therapy for a cardiovascular
condition or heart failure, such as congestive heart failure” fails to make up
for the deficiency in Osorio discussed above (see FF 3). In this regard, we
recognize Appellants’ contention that Examiner failed to “address any of
Appellants’ arguments presented in the Appeal Brief traversing the rejection
of the dependent claims” (Reply Br. 2; Cf. Ans. 7-8 and App. Br. 19-22).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support
Examiner’s finding or conclusion that Osorio alone or in combination
teaches or suggests Appellants’ claimed subject matter.
The rejection of claims 1-8 and 11-27 under 35 U.S.C. § 102(e) as
being anticipated by Osorio is reversed.
The rejection of claims 9, 10, and 25 under 35 U.S.C. § 103(a) as
unpatentable over Osorio is reversed.
The rejection of claims 54-59 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Osorio and Kieval is reversed.

REVERSED

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