Ex Parte Parramon et al

Patent Trial and Appeal Board

Jun 21, 2013

11550763 (P.T.A.B. Jun. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JORDI PARRAMON, DAVID K. L. PETERSON and
PAUL J. GRIFFITH
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Appeal 2011-010838
Application 11/550,763
Technology Center 3700
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Before ERIC GRIMES, ERICA A. FRANKLIN, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This appeal1 under 35 U.S.C. § 134 involves claims 1-36. The Examiner
entered rejections under 35 U.S.C. § 103(a). We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 Appellant identifies the Real Party in Interest as Boston Scientific
Neuromodulation Corporation. (App. Br. 4).
Appeal 2011-010838
Application 11/550,763

2
STATEMENT OF THE CASE
Claims 1 and 2 are illustrative of the appealed subject matter and read
as follows (emphasis added):
1. An implantable stimulator device, comprising:
a plurality of electrodes implantable adjacent to tissue to
be stimulated;
first current generation circuitry comprising a plurality of
first stages, wherein the first stages are distributed among the
electrodes such that any first stage can generate a current at
any particular electrode; and
second current generation circuitry comprising a plurality
of second stages, wherein each of the second stages is directly
coupled to a particular one of the electrodes to generate a
current at each electrode.

2. The implantable stimulator device of claim 1, wherein the
first current generation circuitry generates current with a coarse
resolution, and wherein the second current generation circuitry
generates current with a fine resolution.

The claims stand rejected as follows:
I. Claims 1 and 3-11 under 35 U.S.C. § 103(a) as being unpatentable
over Gord (US 6,181,969, issued Jan. 30, 2001).
II. Claims 2 and 12-36 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Gord and Varrichio (US
7,180,760 B1, issued Feb. 20, 2007).
The same issue is dispositive for each rejection.

DISCUSSION
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence on this
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record falls in favor of Appellants. As Appellants contend, it is well
established that the Examiner’s proposed modification cannot render the
prior art unsatisfactory for its intended purpose (App. Br. 32). See In re
Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984); MPEP § 2143.05(V). Here, the
purpose of Gord’s invention is to “provid[e] a programmable output current
source for use within an implantable tissue or nerve stimulator ... that does
not switch a current or voltage source between different electrode pairs”
(Gord col. 2, ll. 35-38) in order to create a current stimulator that is smaller
and operates at less power (see id. at col. 1, l. 57 to col. 2, l. 30). Gord
expressly states that “the present invention advantageously eliminates the
output switching matrix altogether, and provides a programmable current
output circuit that leaves the electrode node permanently attached to a fixed
location within the output circuit” (id. at col. 5, 11. 63-67). The Examiner’s
proposal to modify the teachings of Gord to add a distributed switching
circuitry would require reconstructing the elements of Gord to include a
configuration that Gord expressly wanted to avoid, because adding the
switching circuitry would eliminate the space- and power-saving advantages
that Gord discloses as the benefits of its permanently attached configuration.
Such a modification would appear to render the operation of the device of
Gord unsatisfactory for its intended purpose.
Conclusion of Law
The preponderance of evidence on this record fails to support the
Examiner’s conclusion that Gord renders claim 1 obvious. We reverse the
rejection of claim 1, and of claims 3-11, which depend on claim 1.
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Claims 2 and 12-36 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Gord and Varrichio. Having reversed
the rejection of claim 1 over Gord, we necessarily reverse this obviousness
rejection further relying upon Varrichio because Varrichio does not cure the
deficiencies of Gord discussed above.

SUMMARY
We reverse all rejections on appeal.

REVERSED

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