Ex Parte MoffittDownload PDFPatent Trial and Appeal BoardDec 29, 201512904933 (P.T.A.B. Dec. 29, 2015) Copy Citation 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 Copy with citationCopy as parenthetical citation