Ex Parte Olsen et alDownload PDFPatent Trial and Appeal BoardJan 20, 201511256220 (P.T.A.B. Jan. 20, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JAMES M. OLSEN and GARY W. KING ____________ Appeal 2012-006687 Application 11/256,220 Technology Center 3700 ____________ Before DONALD E. ADAMS, ULRIKE W. JENKS, and ROBERT A. POLLOCK, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL1 This appeal under 35 U.S.C. § 134 involves claims 28–42 (App. Br. 3).2 Examiner entered rejections under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 The Real Party in Interest is Medtronic, Inc. (App. Br. 3.) 2 This appeal is related to Appeal Nos: 2012-006598 (Application No. 11/566,639) and 2012-006646 (Application No. 11/380,886) (see App. Br. 3). Opinions reversing Examiner’s obviousness rejections were entered into both of the foregoing Appeals on December 16, 2014. Appeal 2012-006687 Application 11/256,220 2 STATEMENT OF THE CASE The claims are directed to a method of electrically stimulating the spinal cord. Claim 28 is representative and is reproduced in the Claims Appendix of Appellants’ Brief. Claims 28–35 and 40–42 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Barreras3 and Hull.4 Claims 36–39 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Barreras, Hull, and Gerber.5 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 1. An annotated version of Appellants’ Figure 4 is reproduced below: “Figure 4 shows an exemplary embodiment [of Appellants’ neurostimulation system, which] compris[es] three percutaneously-implanted epidural electrical-stimulation leads arranged i[n] laterally spaced apart relationship,” 3 Barreras, Sr. et al., US 5,895,416, issued Apr. 20, 1999. 4 Hull et al., US 5,417,719, issued May 23, 1995. 5 Gerber et al., US 2005/0096718 A1, published May 5, 2005. Appeal 2012-006687 Application 11/256,220 3 wherein “ovals and electrode set numbers . . . demonstrate different electrode sets (1-4) of longitudinal and transvers[e] electrode pairs” (Spec. ¶ 17; App. Br. 7). FF 2. Barreras “relates to a method and apparatus for electrically and selectively stimulating specific nerve tissue in a . . . human . . ., by controlling and steering an electric field” (Barreras, col. 1, ll. 7–10; see generally Ans. 5–6). FF 3. Barreras’ Figure 12 is reproduced below: “FIG. 12 is a longitudinal sectional view through . . . three distal tips of . . . three leads [(61–63)] . . . and shows three electric field configurations [(A– C)] established therewith” (Barreras, col. 3, ll. 64–66; see generally Ans. 5– 6). FF 4. Barreras’ Fig. 12 illustrates a set of three stimulation electrodes (71– 73, 74–76, and 77–79) on each lead (61–63) (see generally Ans. 5–6 and 11). FF 5. Examiner finds that Barreras fails to suggest “pairs of longitudinal electrode[s],” as required by Appellants’ claimed invention (Ans. 6 and 11 Appeal 2012-006687 Application 11/256,220 4 (Barraras discloses a longitudinal electrode but not a pair”); see FF 3; Cf. FF 1). FF 6. Hull “relates to a medical device and method for electrically stimulating the spinal cord. More particularly, . . . to an epidural lead having [an array of] electrodes at a distal end” (Hull, col. 1, ll. 6–7; see also Hull, col. 4, ll. 8–9 (Hull’s “method comprises implanting a medical device adjacent the spinal cord”); see generally Ans. 6). FF 7. Examiner’s annotated version of Hull’s Figure 6 is reproduced below: FIG. 6 illustrates a “plan view[] of the distal portion of [one embodiment of Hull’s] . . . neurological stimulation lead” (Hull, col. 6, ll. 7–8; see also Ans. 6–7). Examiner annotated Hull’s FIG. 6 to illustrate how Examiner interprets Hull to suggest “pairs of first, second and third longitudinal electrode[s]” (Ans. 6–7). FF 8. Examiner finds that the combination of Barreras and Hull fails to suggest “medical imaging techniques to verify the position of the first, second and third electrical stimulation leads” and relies on Gerber to make up for this deficiency in the combination of Barreras and Hull (Ans. 10). Appeal 2012-006687 Application 11/256,220 5 ANALYSIS The combination of Barreras and Hull: The method of Appellants’ claim 28 requires, inter alia, implanting three stimulation leads in the epidural space of a patient, wherein: (1) “the first, second and third leads form[] a generally parallel lead array” with the third lead “disposed between the first and second leads;” (2) a “plurality of stimulation electrodes o[n] the first and second . . . leads defin[e] a plurality of transverse pairs of stimulation electrodes, one stimulation electrode of each transverse pair located on” each of the first and second leads, “such that each transverse pair of stimulation electrodes defines a transverse line generally transverse relative to the spinal cord;” and (3) the plurality of stimulation electrodes o[n] the third lead defin[e] a plurality of longitudinal pairs of adjacent stimulation electrodes corresponding to the transverse pairs of transverse stimulation electrodes of the first and second leads, thus forming a plurality of electrode sets each defined by one longitudinal pair and one transverse pair, wherein within each set (i) a distal stimulation electrode of the longitudinal pair is positioned distally of the transverse line defined by the transverse pair of that electrode set and (ii) a proximal stimulation electrode of such longitudinal pair is positioned proximally of the transverse line defined by the transverse pair of that electrode set. (Appellants’ claim 28; see FF 1.) Based on the combination of Barreras and Hull, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious “to modify Barreras to have pairs of longitudinal electrode[s] in view of Hull in order to achieve a stimulation pattern which is movable longitudinally along the spinal column” (Ans. 7). In this regard, Examiner Appeal 2012-006687 Application 11/256,220 6 concludes that it would have been prima facie obvious to divide each of the electrodes in the middle row of the device suggested by the combination of Barreras and Hull into “two electrodes to allow for different strength and polarity currents to be applied to areas of the spine for greater control over targeting specific areas of the spine,” because: (1) “to have more electrodes to make a longitudinal pair of electrode[s] would have been obvious” and (2) the “mere duplication of essential working parts of a device involves only routin[e] skill in the art” (id.; see also id. at 12–13). See generally, In re Harza, 274 F.2d 669, 671 (CCPA 1960) (“It is well settled that the mere duplication of parts has no patentable significance unless a new and unexpected result is produced”). As Appellants explain, however, Examiner failed to articulate why a person of ordinary skill in this art would (1) split, or duplicate, only the electrodes on the third, or middle, lead of the device suggested by the combination of Barreras and Hull and (2) arrange these split, or duplicated, electrodes in a manner that results in a device “having electrodes of a longitudinal pair respectively distal and proximal of the transverse line of a transverse electrode pair as” set forth in Appellants’ claim 28 (App. Br. 10; see FF 1; Cf. FF 2–7).6 On review of this record, we are compelled to agree with Appellants’ contention that Examiner failed to establish a prima facie case of obviousness (see generally App. Br. 8–9 (“[t]he rejection does not account for positioning leads to achieve the[] electrode relationships” required by Appellants’ claimed invention)). An invention composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, 6 Appellants’ claims 29–35 and 40–42 depend ultimately from claim 28. Appeal 2012-006687 Application 11/256,220 7 known in the prior art. . . . [I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). See also In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“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 sum, Examiner failed to establish an evidentiary basis on this record to support a conclusion that the combination of Barreras and Hull suggests a method of electrically stimulating the spinal cord with an arrangement of stimulation leads and electrodes as is required by Appellants’ claimed method. The combination of Barreras, Hull, and Gerber: Appellants’ claim 36 depends from and further limits the method of claim 28 to further comprise the use of “medical imaging techniques to verify the position of the first, second and third electric stimulation leads” (see Appellants’ claim 36).7 Based on the combination of Barreras, Hull, and Gerber, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious to modify the method suggested by the combination of Barreras and Hull to include Gerber’s method of positioning stimulation leads with the aid of “imaging techniques, such as fluoroscopy” (Ans. 10). Examiner, however, failed to establish that 7 Appellants’ claims 37–39 depend ultimately from claim 36. Appeal 2012-006687 Application 11/256,220 8 Gerber makes up for the foregoing deficiencies in the combination of Barreras and Hull (see App. Br. 15–16). CONCLUSION OF LAW The preponderance of evidence relied upon by Examiner fails to support a conclusion of obviousness. The rejection of claims 28–35 and 40–42 under 35 U.S.C. § 103(a) as unpatentable over the combination of Barreras and Hull is reversed. The rejection of claims 36–39 under 35 U.S.C. § 103(a) as unpatentable over the combination of Barreras, Hull, and Gerber is reversed. REVERSED sl Copy with citationCopy as parenthetical citation