Ex Parte Moffitt

Patent Trial and Appeal Board

Jul 28, 2016

13727548 (P.T.A.B. Jul. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
131727,548 12/26/2012 Michael A. Moffitt
45458 7590 08/01/2016
SCHWEGMAN LUNDBERG & WOESSNER/BSC
POBOX2938
MINNEAPOLIS, MN 55402
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.
6279.036US4 8848
EXAMINER
KAHELIN, MICHAEL WILLIAM
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
08/01/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL A. MOFFITT
Appeal2014-004452
Application 13/727,548
Technology Center 3700
Before LYNNE H. BROWNE, ERIC C. JESCHKE, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant, Michael A. Moffitt, 1 appeals under 35 U.S.C. § 134 from
the Examiner's Final decision rejecting claims 1-25.2 We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
Appellant identifies the real party in interest as Boston Scientific
Neuromodulation Corporation. Appeal Br. 2.
2 Pages 2---6 of the Final Action address claims 1-25, but page 1
incorrectly states that only claims 1-24 are pending. Accordingly, we
understand the omission of claim 25 from page 1 of the Final Action to be a
typographical error.
Appeal2014-004452
Application 13/727,548
THE CLAIMED SUBJECT MATTER
The claims are directed to a system and method for computationally
determining migration of neurostimulation leads. Spec. i-f 2. Claims 1 and
15 are independent. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method of monitoring a neurostimulation lead having a
plurality of electrodes implanted within a patient, the method
compnsmg:
providing a plurality of sets of estimated electrical
parameter data, each set corresponding to a predetermined
relative position of the neurostimulation lead;
transmitting electrical energy to or from the electrodes;
measuring electrical parameter data in response to the
transmitted electrical energy;
comparing the measured electrical parameter data with the
estimated electrical parameter data of each of the sets; and
determining a position of the neurostimulation lead based
on the comparison.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
King US 7,317,948B1 Jan. 8,2008
Moffitt '307 US 7,831,307 Bl Nov. 9, 2010
Moffitt '791 US 8,355,791 B2 Jan. 15,2013
REJECTIONS
The Examiner made the following rejections:
1. Claim 11 stands rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
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2. Claims 1, 2, 5-9, 11-16, 19-21, and 23-25 stand rejected under
35 U.S.C. § 102(e) as being anticipated by King.
3. Claims 10 and 22 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
obvious over King.
4. Claims 3, 4, 17, and 18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over King.
5. Claims 1-25 stand rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1-21
of Moffitt '791 and claims 1--48 of Moffitt '307.
Appellant seeks our review of these rejections.
OPINION
Rejection 1
In construing claim 11, which recites "providing a plurality of
neurostimulation lead models, the plurality of lead models respectively
including the plurality of sets of electrical parameter data," the Examiner
states that "it is unclear if or how this limitation limits the method" (Final
Act. 2) and that:
the public is not apprised of the scope of activity that would
encompass "making [a model] available" if not calculating a
model pursuant to the rest of the limitations of the method
claim. There appears to be a lacking link or nexus between the
limitations of claim 11 and the rest of the claim limitations.
Advisory Act. 2. Claim 11 adds an additional "providing" limitation to
claim 1. We agree with the Appellant that there is a "link" between claim 11
and claim 1. Claim 1 recites, in part, "providing a plurality of sets of
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Application 13/727,548
estimated electrical parameter data. Appellant correctly states that, in claim
11, "the neurostimulation lead models include the plurality of sets of
electrical parameter data [recited in claim 1], and therefore, are linked to
the remaining claim elements via the electrical parameter data sets."
Appeal Br. 4--5 (emphasis added). Appellant also asserts that "the Examiner
is objecting to the fact that this claim language is too broad. While this
claim language is indeed broad, it does not make it indefinite." Reply Br. 1-
2; see In re Miller, 441F.2d689, 693 (CCPA 1971) (stating that claim
"breadth is not to be equated with indefiniteness"). As Appellant explains,
the limitation "clearly encompasses more than calculating a model. For
example, the model can be obtained from a third party and provided for use
in the claimed method." Appeal Br. 5. We also note that the Specification
discloses examples of the lead models. See e.g., Spec. i-f i-f 11, 61---63. The
claims, read in light of the specification, would inform one of ordinary skill
in the art about the scope of the invention. Thus, we reverse the Examiner's
rejection of claim 11 under 35 U.S.C. § 112, second paragraph.
Rejections 2--4
In Rejections 2--4, the Examiner finds that King discloses all of the
limitations of independent claims 1 and 15, including "determining a
position of the lead based on the comparison (e.g., col. 11, lines 42-61
describing various movements and positions corresponding to various
measured impedances)." Final Act. 3. The Examiner explains:
King determines this change in posture from a change in
impedance, and this change in impedance is due to changes in
relative distances between electrodes (i.e., by determining a
change in posture, the system has determined a movement of
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Application 13/727,548
the lead( s) ). This relationship of position and impedance is
notorious in the art and is further described at, e.g., column 2,
lines 39-56 of King. Regardless of whether King establishes
some sort of coordinate system to define an absolute position of
each electrode in direct relation to the coordinates of anatomical
structures or other leads, King does determine a position of a
lead as not being at the position it was before the posture
change (i.e., at the very least a relative position). Accordingly,
the examiner respectfully maintains that King fairly reads on
the reasonable scope of claim 1 under section 102.
Id. at 7. The Examiner further finds:
King's undisputed determination of "the position of the lead is
a position where it was not before" (i.e., the lead has migrated
or moved from one position to another due to posture change or
long-term migration). In short, the examiner respectfully
maintains that "determining a position" includes within its
scope determinations of relative positions and does not
necessarily require determining an absolute position, under the
broadest reasonable interpretation.
Advisory Act. 2.
In response, Appellant argues that
In concluding that King discloses this element, the
Examiner has essentially stated that determining that a
neurostimulation lead has moved[,] is the same as determining
the position of the neurostimulation lead. In particular, in
response to Appellant's argument that King merely discloses
identifying a postural event of the patient, and not "determining
a position of the neurostimulation lead" ....
Appellant disagrees. Construing the language
"determining a position" to mean determining whether
something has moved is simply unreasonable and contrary to
any ordinary and accustomed meaning that one of ordinary skill
of art can ascribe to this claim language ....
In the present case, the [S]pecification clearly describes
the determination of the position of the neurostimulation lead in
accordance with its ordinary and accustomed meaning (see
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paragraphs [0058] and [0064]); that is, the actual position of the
neurostinmlation lead is determined relative to a point (which is
either absolute or relative to another neurostinmlation lead).
Nowhere does the [S]pecification remotely state or suggest that
determining a position of a neurostimulation lead encompasses
merely determining whether a neurostimulation lead has moved
from its original position.
Appeal Br. 5-8.
We agree with the Appellant that determining the position of the
neurostimulation lead as recited in claims 1 and 15 is determined relative to
a point that is either absolute or relative to another neurostimulation lead or
an anatomical feature. In contrast to claims 1 and 15, King merely
determines whether a neurostimulation lead has moved from its original
position, not the absolute position of the lead. See, e.g., King 2:39-56,
11:42---61, and 12:30-49. Thus, King does not disclose all of the limitations
of independent claims 1and15, and claims 2-14 and 16-25, which depend
from the independent claims.
We reverse the rejections of claim 1-25 under 35 U.S.C. §§ 102(e)
and 103(a) over King.
Rejection 5
Appellant does not contest the Examiner's rejection of claims 1-25 on
the ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1-21 of Moffitt '791, and claims 1--48 of Moffitt
'3 07. Thus, we sustain the rejection.
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DECISION
For the above reasons, the Examiner's rejection of claim 11 under 35
U.S.C. § 112, second paragraph, is REVERSED.
The Examiner's rejection of claims 1-25 under 35 U.S.C. §§ 102( e)
and 103(a) over King is REVERSED.
The Examiner's rejection of claims 1-25 on the ground of
nonstatutory obviousness-type double patenting is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv) (2015).
AFFIRMED
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