Ex Parte Moffitt et al

Patent Trials and Appeals Board

Apr 12, 2016

13470328 - (D) (P.T.A.B. Apr. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/470,328 05/13/2012
50638 7590 04/13/2016
Boston Scientific Neuromodulation Corp.
c/o Lowe Graham Jones
701 Fifth Avenue
Suite 4800
Seattle, WA 98104
FIRST NAMED INVENTOR
Michael A. 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.
BSNC-1-453.3 5934
EXAMINER
CAREY, MICHAEL JAMES
ART UNIT PAPER NUMBER
3766
MAILDATE DELIVERY MODE
04/13/2016 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, SRIDHAR KOTHANDARAMAN, and
DAVID K. L. PETERSON
Appeal2014-003729
Application 13/470,328 1
Technology Center 3700
Before BIBHU R. MOHANTY, KENNETH G. SCHOPPER, and
AMEE A. SHAH, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
39--41and43-52. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-
in-part.
BACKGROUND
According to Appellants, "[t]he present invention relates to
management of stimulation safety limits, and more particularly, to
1 According to Appellants, the real party in interest is Boston Scientific
Neuromodulation Corporation. Appeal Br. 2.
Appeal2014-003729
Application 13/470,328
management of tissue charge safety limits in a neurostimulation system."
Spec. ,-r 2.
CLAIMS
Claims 39--41 and 43-52 are on appeal. 2 Claims 39 and 44 are
illustrative of the appealed claims and recite:
39. A neurostimulation system for concurrent use with a
plurality of electrodes, comprising:
a neurostimulator configured for delivering electrical
stimulation energy to a tissue region, thereby injecting a charge
into the tissue region at each of the electrodes;
memory storing a hard stop charge limit; and
an external control device configured for displacing the
electrical stimulation energy along the tissue region in one
direction, while preventing a value of the charge injection at each
of the electrodes from meeting or exceeding the hard stop charge
limit.
44. A neurostimulation system for use with at least one
electrode, compnsmg:
a neurostimulator configured for delivering electrical
stimulation energy to a tissue region in accordance with a
stimulation parameter, thereby injecting a charge into the tissue
region at the at least one electrode;
an external control device configured for allowing a user
to modify the stimulation parameter;
memory storing a hard stop charge limit; and
control circuitry configured for modifying the hard stop
charge limit based on a characteristic of the at least one electrode,
determining a tissue charge injection metric at the at least one
electrode, comparing the tissue charge injection metric to the
2 Claims 42 and 53-55 have been identified as having allowable subject
matter and are not on appeal. See Final Action 6; Appeal Br. 2.
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Appeal2014-003729
Application 13/470,328
modified hard stop charge nmn, and preventing the
neurostimulator from delivering the electrical stimulation energy
to the tissue region in accordance with the modified stimulation
parameter based on the comparison.
Appeal Br. 8-9.
REJECTIONS
1. The Examiner rejects claims 39--41and43 under 35 U.S.C.
§ 103(a) as unpatentable over Libbus3 in view of Armstrong4 and
Greenberg. 5
2. The Examiner rejects claims 44--52 under 35 U.S.C. § 103(a) as
unpatentable over Lib bus in view of Greenberg, Swartz, 6 and
Goetz. 7
DISCUSSION
Libbus in view of Armstrong and Greenberg
Claim 39 requires, inter alia, "an external control device configured
for displacing the electrical stimulation energy along the tissue region in one
direction .... " We are persuaded by Appellants' argument that the
proposed combination of art does not teach or suggest this limitation. See
Appeal Br. 5---6.
During prosecution, claims are given "their broadest reasonable
interpretation consistent with the specification" and "in light of the
specification as it would be interpreted by one of ordinary skill in the art."
3 Libbus et al., US 2009/0228079 Al, pub. Sept. 10, 2009.
4 Armstrong, US 2008/0269839 Al, pub. Oct. 30, 2008.
5 Greenberg et al., US 2007/0255319 Al, pub. Nov. 1, 2007.
6 Swartz et al., US 5,470,347, iss. Nov. 28, 1995.
7 Goetz et al., US 2009/0198306 Al, pub. Aug. 6, 2009.
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Appeal2014-003729
Application 13/470,328
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Here, we agree with Appellants that the broadest reasonable interpretation of
claim 39 requires that "displacing the electrical stimulation energy along the
tissue region in one direction" refers to the electrical energy provided by the
neurostimulator. This interpretation is consistent with the remainder of the
claim, which requires a neurostimulator configured for delivering electrical
stimulation and a control device configured for displacing that electrical
stimulation, and the Specification. See Spec. i-f 115. Thus, we find that the
Examiner's interpretation of the claim as requiring only the propagation of
energy in one direction, including a propagating action potential, is
unreasonably broad. With respect to the cited art, the Examiner relies only
on a portion of Armstrong that discloses delivering a stimulation signal that
initiates a uni-directional action potential. See Final Action 2-3; Ans. 3;
Armstrong i-f 27. Based on the broadest reasonable interpretation of the
claim provided above, we agree with Appellants that Armstrong does not
disclose displacing electrical stimulation energy in one direction as claimed.
Thus, we determine that the Examiner failed to establish a prima facie
showing of obviousness with respect to claim 39. Accordingly, we do not
sustain the rejection of claim 39 and dependent claims 40, 41, and 43.
Lib bus in view of Greenberg, Swartz, and Goetz
Appellants argue claims 44--52 as a group. Appeal Br. 6. We select
claim 44 as representative. Claims 45-52 stand or fall with claim 44. See
37 C.F.R. § 41.37(c)(l)(iv (2014).
With respect to claim 44, the Examiner finds that Libbus teaches a
device as claimed. See Final Action 3--4 (citing Libbus i-fi-17, 30, 33, 36, 37,
47; Figs. 1, 3, 6, 7); see also Ans. 3--4. Although the rejection lists
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Application 13/470,328
Greenberg, Swartz, and Goetz, the Examiner acknowledges that the rejection
of claim 44 relies only on the disclosure of Lib bus. See Ans. 4. We agree
with and adopt the Examiner's findings and conclusions regarding claim 44.
See Final Action 3---6; Ans. 3--4. As discussed below, we are not persuaded
by Appellants' arguments.
Appellants argue only that the Examiner has not shown that Libbus
discloses circuitry configured for modifying the hard stop charge limit.
Appeal Br. 6-7; Reply Br. 3. In support, Appellants assert that Libbus i-f 33
only discloses modifying a stimulation parameter. Libbus i-f 33 discloses
providing hard stop limit detection in the form of a safety-control event
detection module, but does not disclose modifying a hard stop charge limit.
However, the Examiner cites other paragraphs in Libbus that teach
modifying a hard stop charge limit. See, e.g., Ans 4 (citing Libbus i-fi-136,
37). Specifically, Libbus includes a safety-control event detection module
that detects when stimulation energy exceeds a predetermined threshold in
order to prevent "excessive delivery of energy due to excessive stimulation
amplitude and/or frequency." Libbus i-f 36. Libbus further discloses that the
safety-control event detection module may including "a threshold
adjustment module that dynamically adjusts the threshold value based on at
least the value of another stimulation parameter." Id. at i-f 37. Thus, we find
reasonable the Examiner's finding that Libbus discloses control circuity
configured for modifying the hard stop charge limit based on a characteristic
as required by claim 44. Finally, to the extent Appellants discuss whether
Libbus discloses the failure of an electrode, it is not clear how said
discussion has any bearing on the rejection before us. See App. Br. 6.
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Application 13/470,328
Based on the foregoing, we find that the Examiner established a prima
facie showing of obviousness without error. Accordingly, we sustain the
rejection of claim 44. We also sustain the rejections of claims 45-52 as they
fall with claim 44.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 39-
41 and 43; and we affirm the rejections of claims 44--52.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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