Ex Parte Moffitt et al

Patent Trial and Appeal Board

May 9, 2016

12204170 (P.T.A.B. May. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/204,170 09/04/2008
45458 7590 05/11/2016
SCHWEGMAN LUNDBERG & WOESSNER/BSC
POBOX2938
MINNEAPOLIS, MN 55402
Michael Moffitt
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.
6279.156US1 4503
EXAMINER
PORTER, JR, GARY A
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
05/11/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL MOFFITT, DONGCHUL LEE, KERRY BRADLEY,
and DAVID K. L. PETERSON
Appeal2014--001045
Application 12/204, 170 1
Technology Center 3700
Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
THOMAS F. SMEGAL, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael Moffitt et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner's Final Rejection under 35 U.S.C. § 103(a) of claims
1 and 5 as unpatentable over Hull (US 5,417,719; iss. May 23, 1995); of
claims 2, 12, 13, and 16 as unpatentable over Hull and Erickson (US
6,754,539 Bl; iss. June 22, 2004); of claims 1, 4, 12, and 15 as unpatentable
over Feler (US 2007 /0179579 Al; pub. Aug. 2, 2007) and Hull; and of
claims 3 and 14 as unpatentable over Hull, Erickson, and Ayal (US
1 According to Appellants, the real party in interest is Boston Scientific
Neuromodulation Corporation. Appeal Br. 2.
Appeal2014--001045
Application 12/204, 170
2006/0106441 Al; pub. May 18, 2006). 2' 3 We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
Claims 1 and 12 are independent. Claim 1 is reproduced below and
illustrates the claimed subject matter, with disputed limitations emphasized.
1. A method of providing therapy to a patient,
compnsmg:
(a) disposing at least four electrodes adjacent spinal cord
tissue of the patient in a medial-lateral electrode arrangement,
wherein the at least four electrodes has two inner electrodes and
two outer electrodes flanking the two inner electrodes;
(b) conveying electrical energy between the electrodes to
create a medial-lateral electrical field;
( c) discretely moving a locus of the medial-lateral
electrical field to one lateral side of the midline of the spinal
cord tissue;
( d) discretely moving the locus of the medial lateral
electrical field to the other lateral side of the midline of the
spinal cord tissue; and
2 Claims 6-9, 11, and 18 were canceled. Appeal Br. 2. The Final Rejection
of claims 10 and 17 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-
AIA), second paragraph, has been withdrawn. Ans. 10.
3 Claims 1-5, 10, and 12-17 are also provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
either claims 1-16 of copending Application No. 12/204,154 or claims 1-12
of copending Application No. 12/204,136. Final Act. 2--4; See also pages
3--4 of the prior Final Rejection mailed August 11, 2011 and page 2 of an
Amendment dated September 13, 2012.
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Appeal2014--001045
Application 12/204, 170
(e) repeating steps (c) and (d) to repeatedly move the
locus of the medial-lateral field back and forth between the one
lateral side and the other lateral side of the midline of the spinal
cord tissue, whereby dorsal column nerve fibers on both sides
of the midline of the spinal cord tissue are stimulated without
stimulating the dorsal column nerve fibers along the midline of
the spinal cord tissue.
ANALYSIS
Obviousness of claims 1 and 5 over Hull
We are persuaded by Appellants' arguments that the Examiner fails to
establish a prima facie showing of obviousness in rejecting claims 1 and 5
over Hull. See Appeal Br. 4--12; Reply Br. 1-7.
In rejecting claim 1, the Examiner finds that while "Hull discloses
activating electrodes 26 and 28 to create a unilateral field on one side of the
midline and selecting electrodes 26 and 32 to create a unilateral field on the
opposite side of the midline," the "difference [between] the claimed method
and the disclosure of Hull is [lack of] the explicit step of repeatedly moving
the locus of the field back and forth between opposing lateral sides of the
midline." Final Act. 9-10. However, the Examiner reasons that because
"Hull discloses that pain on the left and right sides of the body can be treated
by placing electrodes on each side of the midline," that "Hull does
contemplate ... adapting the electrode combination as a patient's pain area
moves." Final Act. 9-10 (citing Hull, col. 1, 11. 53---61; col. 7, 1. 50-col. 8, 1.
7).
Based on the foregoing, the Examiner concludes that
it would have been obvious to try and move the field in the
manner claimed since Hull teaches that there are a finite
number of combinations of electrodes ( 65 to be exact, [citing]
col. 7, 11. 65-66) that can be used to provide medial-to-lateral
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Appeal2014--001045
Application 12/204, 170
paresthesia across the midline and that there are [also] a finite
number of shifts between electrodes that can be made to move
the field in response to changes in the patient.
Final Act. 10-11 (citing Hull, col. 8, 11. 17-26).
In response, Appellants first explain that
[b ]ecause [claim 1 recites that] the locus of the electrical field
must be discretely moved between the lateral sides of the
midline of the spinal cord tissue, claim 1 excludes a technique
[like Hull] that gradually moves the electrical field from one
lateral side to the other lateral side across the midline of the
spinal cord tissue since such technique would not be discrete,
and in fact, would ultimately stimulate the dorsal column nerve
fibers as the electrical field moves across the midline.
Appeal Br. 5.
Appellants continue by pointing out that
[t]here is no disclosure or suggestion in Hull that electrode
combinations are selected to discretely move the electrical field
back and forth across the midline of the spinal cord tissue
•,1 , ,. 1 ,. ,1 1 1 1 l'-1 1 ,1
wnnour snmutanng me aorsat cotumn nerve 1zoers atong me
midline of the spinal cord tissue.
Id. at 12 (emphasis added).
In the Answer, and without responding to Appellants' argument
regarding claim 1 being limited to repeating steps ( c) and ( d) "without
stimulating the dorsal column nerve fibers along the midline of the spinal
cord tissue," the Examiner contends that Hull discloses "a screening process
that systematically tests different discrete electrode combinations [that]
would be beneficial in obtaining an optimum electrode configuration,"
which "is what the Examiner relies upon for the rejection of the claims since
Appellant[s'] claims require the shift of stimulation from one side of the
midline to the other at some point over the life of the patient." Ans. 15. The
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Appeal2014--001045
Application 12/204, 170
Examiner concludes that "following the guidance of Hull, the performance
of the claimed method is an obvious use of the Hull device for compensating
for pain and/ or lead migration." Id. at 21.
The key to supporting any rejection under 35 U.S.C. § 103 is the clear
articulation of the reason(s) why the claimed invention would have been
obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007), noted that the analysis supporting a rejection under
35 U.S.C. § 103 should be made explicit. Furthermore, the Federal Circuit
has stated that "rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006) (cited with
approval in KSR, 550 U.S. at 418).
The Examiner has not made sufficient findings of how the electrode
combinations of Hull would be selected to "discretely" move the electrical
field back and forth across the midline of the spinal cord tissue "without
stimulating the dorsal column nerve fibers along the midline of the spinal
cord tissue," as recited by claim 1. Accordingly, we agree with Appellants
that, based on the evidence before us, the Examiner has not demonstrated
that the claimed subject matter would have been obvious to one having
ordinary skill in the art.
For the foregoing reasons, we do not sustain the rejection of claims 1
and 5 as unpatentable over Hull.
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Appeal2014--001045
Application 12/204, 170
Obviousness of claims 2, 12, 13, and 16 over Hull and Erickson; of
claims 1, 4, 12, and 15 over Feler and Hull; and of claims 3 and 14 over
Hull, Erickson, and Ayal
Regarding the referenced claims, each of the Examiner's rejections is
based on the same unsupported findings discussed above with respect to the
disclosure of Hull. See generally Final Act. 11-16. The addition of
Erickson, Feler, and/or Ayal does not remedy the deficiencies of Hull, as
discussed supra.
Accordingly, for similar reasons as discussed above for claim 1, we
do not sustain the Examiner's decisions rejecting claims 2, 12, 13, and 16
over Hull and Erickson, claims 1, 4, 12, and 15 over Feler and Hull; and
claims 3 and 14 over Hull, Erickson, and Ayal.
Provisional Double Patenting Rejections of claims 1-5, 10, and 12-
17
Appellants have not presented the Examiner's provisional double
patenting rejection for our review. See Final Act. 2; Ans. 4. "Once the
provisional rejection has been made, there is nothing the examiner and the
applicant must do until the other application issues." In re Mott, 539 F.2d
1291, 1296 (CCPA 1976); see also MPEP § 804(I)(B)[l].
At this time applications 12/204,154 and 12/204,136 have issued.
However, the claims of both of these applications have been amended
subsequent to the Examiner's prior Final Rejection. Double patenting is a
matter of what is claimed. General Foods Corp. v. Studiengesellschaft
Kahle mbH, 972 F.2d 1272, 1277 (Fed. Cir. 1992). Neither the Examiner
nor Appellants have provided us with any discussion regarding the merits of
the Examiner's provisional double-patenting rejection with regard to the
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Appeal2014--001045
Application 12/204, 170
issued claims. In light of these facts, the Examiner's provisional rejection is
moot and we return the case to the Examiner for action as may be deemed
appropriate.
DECISION
The Examiner's prior-art rejections are reversed. We do not reach the
merits of the provisional double-patenting rejections.
REVERSED
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