Ex Parte Rao et al

Patent Trial and Appeal Board

Jun 15, 2016

13679551 (P.T.A.B. Jun. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/679,551 11/16/2012
45458 7590 06/17/2016
SCHWEGMAN LUNDBERG & WOESSNER/BSC
POBOX2938
MINNEAPOLIS, MN 55402
Prakash Rao
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.
6279.143US1 6043
EXAMINER
MANUEL, GEORGE C
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
06/17/2016 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PRAKASH RAO, SRIDHAR KOTHANDARAMAN, and
CHRISTOPHER B. GOULD
Appeal2014-006369
Application 13/679 ,551 1
Technology Center 3700
Before BART A. GERSTENBLITH, KENNETH G. SCHOPPER, and
MATTHEWS. MEYERS, 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 1-17. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
BACKGROUND
According to Appellants, the invention relates "to tissue stimulation
systems, and more particularly, to neurostimulation systems for
programming neurostimulation leads. Spec. i-f 2.
1 According to Appellants, the real party in interest is Boston Scientific
Neuromodulation Corporation. Appeal Br. 2.
Appeal2014-006369
Application 13/679,551
CLAHvIS
Claims 1-17 are on appeal. Claim 1 is the only independent claim
and recites:
1. An external control device for use with a neurostimulator
coupled to a plurality of electrodes capable of conveying
electrical stimulation energy into tissue in which the electrodes
are implanted, comprising:
a user interface including at least one control element;
a processor configured for independently assigning
stimulation amplitude values to a first set of the electrodes, for
linking the first set of electrodes together in response to the
actuation of the at least one control element, and for preventing
the stimulation amplitude values of the first linked set of
electrodes from being varied relative to each other; and
output circuitry configured for transmitting the stimulation
amplitude values to the neurostimulator.
Appeal Br. 8.
REJECTIONS
1. The Examiner rejects claims 10 and 152 under 35 U.S.C. § 112,
second paragraph, as indefinite.
2. The Examiner rejects claims 1-17 under 35 U.S.C. § 102(b) as
anticipated by Meadows. 3
2 The rejection of claim 9 under 35 U.S.C. § 112, second paragraph has
been withdrawn. See Ans. 4.
3 Meadows et al., US 6,516,227 Bl, iss. Feb. 4, 2003.
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Appeal2014-006369
Application 13/679,551
Rejection 1
DISCUSSION
The Examiner rejects claims 10 and 15 because "fractionalized values
are indefinite and supporting structure is lacking for fractionalizing values."
Final Action 2. Additionally, in response to Appellants' arguments, the
Examiner finds that "claims 10 and 15 require the stimulation amplitude
value to be fractionalized and it is not clear what performs the
fractionalization." Ans. 5. We are persuaded by Appellants' arguments and
find that the Examiner has not established that these claims are indefinite.
The Examiner provides no explanation as to why the term "fractionalized
electrical current values" is ambiguous such that it renders claims 10 and 15
indefinite. See Final Action 2; Ans. 4--5. We also agree with Appellants
that the claims need not identify the specific structure that fractionalizes the
electrical current values in order for the scope of the claim to be understood
by one of ordinary skill in the art. Accordingly, we do not sustain this
rejection. See Appeal Br. 4; Reply Br. 2.
Rejection 2
We are persuaded by Appellants' argument that the Examiner failed to
establish that Meadows discloses a processor configured for linking
electrodes and preventing the stimulation values of the linked electrodes
from being varied relative to each other as required by independent claim 1.
See Appeal Br. 4--6. With respect to this limitation, the Examiner finds that
Meadows discloses a processor "configured for independently assigning
stimulation amplitude values to a first set of electrodes" and that:
It is inherent the programming processor in case 220 links
the first set of electrodes together in response to the actuation of
the at least one control element, and prevents the stimulation
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Appeal2014-006369
Application 13/679,551
amplitude values of the first linked set of electrodes from being
varied relative to each other so that an amplitude and duration of
a current pulse may be directed to a selected group of cathodic
and anodic electrodes.
Final Action 3. The Examiner also finds:
Programmable output current DAC's (digital-to-analog
converters) are connected to each electrode node, so that, when
enabled, any electrode node can be grouped with any other
electrode node that is enabled at the same time, clearly
suggesting electrodes that are individually assigned stimulation
amplitude values may be linked together and then prevented
from being varied relative to each other using the programming
of the ETS 140. See col. 2, Line 65 to col. 3, line 27.
Id. at 6. Finally, in response to Appellants' arguments, the Examiner finds:
Clearly, as Meadows states, any electrode node can be grouped
with any other electrode node that is enabled at the same time.
This eliminates the need for a switching matrix and does prevent
a stimulation amplitude value between the grouped electrodes
from being varied relative to each other. See col. 3, lines 5-14.
Ans. 5.
Although Meadows describes grouping or linking electrodes in the
portion cited by the Examiner, we are not persuaded that Meadows expressly
or inherently discloses that the processor is configured for, or capable of,
preventing the stimulation of a set of grouped electrodes from varying
relative to each other. The Examiner acknowledges that the cited portions of
Meadows only suggest that electrodes may be linked and then prevented
from being varied. "Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient." In re Robertson,
169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotation marks
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Appeal2014-006369
Application 13/679,551
omitted). Thus, on the record before us, we find that the Examiner failed to
establish a prima facie showing of anticipation with respect to claim 1.
Accordingly, we do not sustain the rejection of claim 1 or any of
dependent claims 2-17.
CONCLUSION
For the reasons set forth above, we reverse the rejections of claims 1-
17.
REVERSED
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