Ex Parte Olsen et al

Patent Trials and Appeals Board

Jan 20, 2015

11256220 - (D) (P.T.A.B. Jan. 20, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAMES M. OLSEN and GARY W. KING
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Appeal 2012-006687
Application 11/256,220
Technology Center 3700
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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.
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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.
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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
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(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).
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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
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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.
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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.
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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

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