Ex Parte Moffitt

Patent Trial and Appeal Board

Dec 29, 2015

12904933 (P.T.A.B. Dec. 29, 2015)

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.
12/904,933 10/14/2010 Michael A. Moffitt BSNC-1-451.1 6916
50638 7590 12/29/2015
Boston Scientific Neuromodulation Corp.
c/o Lowe Graham Jones
701 Fifth Avenue
Suite 4800
Seattle, WA 98104
EXAMINER
WU, TONG E
ART UNIT PAPER NUMBER
3766
MAIL DATE DELIVERY MODE
12/29/2015 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 MICHAEL A. MOFFITT
____________

Appeal 2013-003420
Application 12/904,933
Technology Center 3700
____________

Before ANNETTE R. REIMERS, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.

WARNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Michael A. Moffitt (“Appellant”)1 appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1–13 and 15–21, which are all
the pending claims. See Appeal Br. 4. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We REVERSE.

1 According to Appellant, the real party in interest is Boston Scientific
Neuromodulation Corporation. Appeal Br. 2.
Appeal 2013-003420
Application 12/904,933

2
CLAIMED SUBJECT MATTER
Appellant’s disclosed invention “relates to modeling lead electrodes,
and more particularly, to a system and method for modeling lead electrodes
for use with an implantable tissue stimulator.” Spec. ¶ 2. Claim 1,
reproduced below with emphasis added, is the sole independent claim and is
representative of the subject matter on appeal.
1. A system for a neurostimulation device, comprising:
a user input device configured for receiving an electrode
morphology having at least one electrode;
memory storing at least one basis electrode model;
at least one processor configured for modeling the at
least one electrode by recalling the at least one basis electrode
model from the memory, and using the recalled at least one
basis electrode model multiple times to construct a model of the
at least one electrode.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
McIntyre US 7,346,382 B2 Mar. 18, 2008
Keacher US 2008/0183256 A1 July 31, 2008

REJECTIONS
The following rejections are before us for review:2

2 We note that the Final Office Action (dated Apr. 20, 2012) includes a
rejection of pending claims 11 and 12 under 35 U.S.C. § 112, second
paragraph, as being indefinite for lacking an antecedent basis for a recited
limitation. Final Act. 3. Appellant subsequently filed an Amendment (dated
June 11, 2012), which was entered by the Examiner, which appears to have
Appeal 2013-003420
Application 12/904,933

3
I. Claims 1–13, 15, and 18–21 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Keacher.3
II. Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Keacher and McIntyre.

ANALYSIS
Independent claim 1 recites, in relevant part, a system for a
neurostimulation device that includes “memory storing at least one basis
electrode model,” and “at least one processor configured for modeling . . . at
least one electrode by recalling the at least one basis electrode model from
the memory, and using the recalled at least one basis electrode model
multiple times to construct a model of the at least one electrode.” See
Appeal Br., Claims App. (emphasis added). Appellant argues that Keacher
does not disclose such a system that uses a recalled basis electrode model
multiple times to construct a model of an electrode. See Appeal Br. 5–7;
Reply Br. 1–2. We agree.

removed the basis of this rejection. However, neither the Advisory Action
(dated June 22, 2012) nor the Examiner’s Answer (dated Dec. 3, 2012)
formally withdraws this rejection. As this rejection is not contested in the
appeal (it is not identified as a rejection under appeal by Appellant and it is
not included in the grounds of rejection applicable to the appealed claims in
the Examiner’s Answer), we consider it effectively withdrawn and conclude
that it is not before us for review as part of the instant appeal. Should there
be further prosecution of this application, the Examiner may wish to address
a formal withdrawal of this rejection.
3 We note that the Examiner included claim 14 in the caption, but not in
the body, of this rejection. See Final Act. 3–9; Ans. 2–6. Claim 14 has been
canceled. See Appeal Br., Claims App. We treat this discrepancy as an
inadvertent and harmless error for purposes of the present appeal.
Appeal 2013-003420
Application 12/904,933

4
With regard to these recited functions of the processor as claimed, the
Examiner states that Keacher discloses such limitations. Final Act. 3–4;
Ans. 2 (both citing Keacher ¶¶ 50, 52, 55). These cited portions of Keacher
disclose a graphical representation for programming an electrode lead using
one or more active electrode templates that can be chosen from different
options. See Keacher ¶¶ 45–56. Although we agree with the Examiner that
Keacher’s active electrode template 52 falls within the broadest reasonable
interpretation of the claimed basis electrode model, Appellant persuasively
asserts that Keacher’s active electrode template 52 “is not used to construct a
model” of the electrode—let alone used “multiple times” to construct the
model—as recited in the claim. Appeal Br. 5–6.
The Examiner responds to the assertion that Keacher’s template is not
used multiple times by stating that “Keacher clearly discloses using more
than one electrode template to configure the lead,” which the Examiner
interprets as encompassing constructing a model. Ans. 9 (citing Keacher
¶ 52). Regardless of whether configuring a lead by assigning a polarity
fairly includes the recited limitation of constructing a model, this cited
disclosure from Keacher is not sufficient to meet the plain language of the
claim. The claim certainly allows for the use of multiple active electrode
templates, in that it recites the storage of “at least one basis electrode
model,” but the claim requires more than this—it also requires “using the
recalled at least one basis electrode model multiple times to construct a
model of the at least one electrode.” See Appeal Br., Claims App. (emphasis
added). In other words, we agree with Appellant that Keacher’s disclosure
of using multiple templates “is not the same” as using a template multiple
times to construct a model, as the claim requires. Reply Br. 2.
Appeal 2013-003420
Application 12/904,933

5
Thus, the Examiner has not established by a preponderance of the
evidence that Keacher discloses, either expressly or inherently, a processor
that is configured for modeling at least one electrode by using a recalled
basis electrode model multiple times to construct a model of the electrode as
claimed.
Accordingly, based on the record before us—because an anticipation
rejection requires a finding of each and every limitation as set forth in the
claims in a single reference—we cannot sustain the rejection of independent
claim 1, and associated dependent claims 2–13, 15, and 18–21, as
anticipated by Keacher. Regarding Rejection II, we note that this rejection
is premised on the same purported disclosure from Keacher, and that
McIntyre is relied on for teaching additional features, but not to cure the
deficiency of Keacher identified above. Consequently, we also do not
sustain the rejection of dependent claims 16 and 17 as being unpatentable
over Keacher and McIntyre.

DECISION
We REVERSE the Examiner’s rejections of claims 1–13 and 15–21.

REVERSED

msc