Ex Parte Rao et al

Patent Trial and Appeal Board

Mar 20, 2017

14042349 (P.T.A.B. Mar. 20, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/042,349 09/30/2013 Prakash Rao 6279.122US1 2702
45458 7590 03/22/2017
smwfPtMan t t tndrf.ro & wofnnnfr/rnf EXAMINER
PO BOX 2938 PORTER, JR, GARY A
MINNEAPOLIS, MN 55402
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
03/22/2017 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):
uspto@slwip.com
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PRAKASH RAO, ANITA YIP, and
SRIDHAR KOTHANDARAMAN
Appeal 2015-005417
Application 14/042,349
Technology Center 3700
Before LYNNE H. BROWNE, LISA M. GUIJT, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants, Prakash Rao et al.,1 appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1—13, 15—20, and 22.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter NEW GROUNDS OF REJECTION pursuant
to 37 C.F.R. § 41.50(b).
1 Appellants identify Boston Scientific Neuromodulation Corporation
as the real party in interest. Appeal Br. 2.
2 Claim 21 is cancelled, and claim 14 recites patentable subject matter.
Id.
Appeal 2015-005417
Application 14/042,349
THE CLAIMED SUBJECT MATTER
The claims are directed to neurostimulation devices. Claim 1, the
only independent claim, is reproduced below:
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 configured for receiving direct input from
a user specifying a target value for a target electrode, the user
interface including a display screen configured for displaying
graphical representations of the electrodes;
a controller/processor configured for, in response to the
direct user input, assigning a new stimulation amplitude value to
the target electrode; and
output circuitry configured for transmitting the new
stimulation amplitude value to the neurostimulator.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Goetz I3
Goetz III
Goetz II
Thacker
US 2006/0259099 A1
US 2007/0203537 A1
US 2009/0196471 A1
US 2010/0010566 A1
Nov. 16, 2006
Aug. 30, 2007
Aug. 6, 2009
Jan. 14, 2010
3 To minimize confusion, this Decision uses the notation used by the
Appellants and the Examiner.
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Application 14/042,349
REJECTIONS
The Examiner made the following rejections:
1. Claims 1—6, 8—12, 19, and 22 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Goetz I.
2. Claims 1, 6, and 7 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Goetz II.
3. Claims 1, 2, 10, 13, and 15—18 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Thacker.
4. Claims 1 and 20 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Goetz III.
Appellants seek our review of these rejections.
ANALYSIS
Rejection 1: The Rejection of
Claims / 6, 8—12, 19, and 22 as Anticipated By Goetz I
Claims E 3—6, 8—12, 19, and 22
The Examiner finds that Goetz I discloses all of the limitations of
claim 1 including a user interface configured for receiving direct input from
a user specifying a target value for a target electrode.” Final Act. 9.
According to the Examiner, programmer 254 receives input directly from a
user specifying stimulation parameters such as amplitude 260, pulse width
262, and frequency 264. Id. (citing Goetz 11187, Fig. 19). The Examiner
also finds that “the input device can be a keypad or a touch screen that
functions with a stylus. Both of which are characterized in Applicant’s
specification as ‘direct input.’” Id. at 3.
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Application 14/042,349
Appellants argue that the Examiner’s findings are erroneous.
Appellants explain that the “specification distinguishes a direct input from a
user specifying a target value for a target electrode from incremental
changes [(e.g., using an up or down arrow)] to incrementally arrive at the
target value.” Reply Br. 5; see Appeal Br. 6. Appellants argue that:
Merely because the Goetz I programmer and the programmer
described in Applicant's specification may utilize the same
hardware, this does not mean that the keypad or touch screen can
be used for direct input into the programmer. ... In fact, the
Goetz I programmer only illustrates the user input for the
amplitude adjustment as being up and down arrows, and based
on this, one of ordinary skill in the art can only conclude that the
keypad and stylus are likewise used to actuate up and down
arrows, which are clearly not considered to be directed user
input, as explained in the previous response. In the end, although
Examiner has cited hardware (i.e., a keypad or stylus) that could
theoretically be used to provide the claimed direct user input with
an appropriately designed programmer, Goetz I does not
specifically describe the programmer as being capable of
receiving direct user input from this hardware.
Appeal Br. 6; see also Reply Br. 3—6.
The Specification describes the difference between direct and indirect
input stating:
It can be seen that the various methods of assigning
stimulation parameter values in the embodiments set out above
have all proceeded indirectly. That is, the user selects a
parameter value for a particular electrode E1 -E16 at one location,
such as, for example, electrode specific current adjustment
control 114 (Fig. 7). That control 15 provides a convenient
location and process for inputting values, but the user is limited
to incremental changes (that is, values are altered by pressing the
appropriate arrow and waiting for the control 114 to step through
all intermediate values).
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Some embodiments may allow the user to assign a new
stimulation parameter value, such as, for example, a new
stimulation amplitude value, by directly entering a desired value
by typing with a key board, or writing with a stylus, or other input
device.
Spec. 86—87 (emphasis added). Thus, one reading claim 1 in light of the
Specification would understand “direct” input to be entry of desired values
by typing or writing, and “indirect” input to be limited to entry of
incremental values. Goetz I’s up and down arrows (i.e., Goetz I’s user
interface) are, thus, configured for indirect entry, not direct entry as required
by claim 1. Accordingly, we agree with Appellants that the Examiner’s
finding is in error.
Thus, the rejection of claim 1 and its dependent claims 3—6, 8—12, 19,
and 22 is not sustained.
Rejection 2: The Rejection of Claims 1, 6, and 7
as Anticipated By Goetz II
The Examiner finds that Goetz II discloses all of the limitations of
claim 1 including programmer 20 which receives input directly from a user
specifying stimulation parameters such as amplitude 146, pulse width 148,
frequency 152, and electrode polarity. Final Act. 11 (citing Goetz II || 222—
225, 92-93, Figs. 3, 25).
Appellants argue that “the Examiner erred in rejecting claims 1, 6, and
7 under 35 U.S.C. § 102(b), as being anticipated by Goetz II for the same
reasons discussed above with respect to Goetz II.” Appeal Br. 10; see also
Reply Br. 3. We understand that the second reference to Goetz II (italicized)
is a typographical error, and should refer to Goetz I discussed above in
Rejection 1.
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We agree with Appellants that the portions of Goetz II cited by the
Examiner do not describe a user interface configured for direct input as
required by claim 1, for the same reasons Goetz I does not describe such a
user interface discussed supra. Thus, the rejection of claim 1 and its
dependent claims 6 and 7 is not sustained.
Rejection 3: The Rejection of Claims 1, 2, 10, 13, 15—18
as Anticipated By Thacker
The Examiner finds that Thacker discloses all of the limitations of
claim 1 including a user interface having display 76, keyboard 74, and
mouse 72 for inputting user selections of electrodes and their associated
stimulation parameters, and processor 80 that assigns new stimulation
amplitudes to electrodes specified by user input using an E-Troll functional
algorithm. Final Act. 12 (citing Thacker || 76—99, Figs. 7—24).
With respect to claim 1, Appellants argue that “[f]or the same reasons
discussed above with respect to Goetz I, Thacker does not disclose
‘receiving direct input from a user specifying a target value for a target
electrode ....’” Appeal Br. 10-11; see also Reply Br. 3.
We agree with Appellants that the portions of Thacker cited by the
Examiner do not describe a user interface configured for direct input as
required by claim 1, for the same reasons Goetz I does not describe such a
user interface discussed supra. Thus, the rejection of claim 1 and its
dependent claims 2, 10, 13, 15, 16, and 18 is not sustained.
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Rejection 4: The Rejection of Claims 1 and 20
as Anticipated By Goetz III
Appellants argue claims 1 and 20 as a group. Appeal Br. 12. We
select claim 1 as the representative claim, and claim 20 stands or falls with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Goetz III discloses all of the limitations of
claim 1 including programmer 19, 114 which receives direct user input
through input means such as a touch screen display 115, wherein the input
adjusts stimulation values for target electrodes such as amplitude, pulse
width, frequency, polarity, and electrode grouping. Final Act. 13 (citing
Goetz III 1197-100, 106-111, Fig. 6).
Appellants argue that the Examiner’s rejection is incorrect. In the
Appeal Brief, Appellants’ entire argument is:
Appellant respectfully submits that the Examiner erred in
rejecting claims 1 and 20 under 35 U.S.C. § 102(b), as being
anticipated by Goetz III for the same reasons discussed above
with respect to Goetz III.
Appeal Br. 12 (emphasis added). We understand that the second reference
to Goetz III (italicized) is a typographical error and should refer to
Appellants’ argument regarding Goetz I. Appellants’ argument is not
persuasive because the teachings of Goetz III and Goetz I are different, and
the Examiner’s findings relating to Goetz III and Goetz I are different.
In the Reply Brief, Appellants argue that Goetz III (and the other prior
art, Goetz I, Goetz II, and Thacker) do not anticipate claim 1 because:
claim 1 recites among other things user interface configured
for receiving direct input from a user specifying a target value
for a target electrode.'1'’
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Appellant respectfully asserts that this claim language was
not specifically addressed in the rejections. For example, the
rejections do not clearly identify that which is “a target value for
a target electrode” or the “direct input from a user specifying”
that target value for that target electrode.
Reply Br. 3. Appellants also argue that the “specification distinguishes a
direct input from a user specifying a target value for a target electrode from
incremental changes [(e.g., using an up or down arrow)] to incrementally
arrive at the target value.” Reply Br. 5; see Appeal Br. 5—7.
Neither argument is persuasive. Referring to Figure 6 of Goetz III,
the Examiner correctly finds that programmer 114 receives direct user input
through input means such as a touch screen display 115, wherein the input
adjusts stimulation values for target electrodes such as amplitude, pulse
width, frequency, polarity and electrode grouping. Final Act. 13. Referring
to Figure 6, Goetz III discloses that:
For each electrode combination selected by a user, the user may
also specify simulation parameters as shown in FIG. 6. For
example, the user may specify voltage or current amplitude,
pulse width, and pulse rate for stimulation pulses to be delivered
via the selected electrode combination shown in the side and
cross-sectional views 116 and 120. The user may use up/down
arrows to change the values for respective parameters or directly
enter values if numeric input is available in programmer 114.
Goetz III, 1116, Fig. 6 (emphasis added). Thus, Goetz III discloses that a
specific target value (e.g., simulation parameters such as voltage, current
amplitude, pulse width, and pulse rate) for selected electrodes is directly
input by a user using a numeric input (e.g., keyboard), not up or down
arrows.
For the above reasons, the rejection of claim 1, and claim 20 which
falls with claim 1, is sustained.
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NEW GROUNDS OF REJECTION
Pursuant to 37 C.F.R. § 41.50(b), we enter new grounds of rejection
as follows:
1. Claims 1—6, 8—12, 19, and 22 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Goetz I and Goetz III.
2. Claims 1, 6, and 7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Goetz II and Goetz III.
3. Claims 1, 2, 10, 13, and 15—18 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Thacker and Goetz III.
As discussed above in Rejections 1—3, the Examiner finds that Goetz
I, Goetz II, and Thacker disclose all of the limitations of claim 1, including
“a user interface configured for receiving direct input from a user specifying
a target value for a target electrode.” We do not sustain the Rejections 1—3
because the portions of Goetz I, Goetz II, and Thacker cited by the Examiner
do not describe a user interface configured for direct input, as opposed to
indirect input, as discussed supra. However, as discussed in Rejection 4, a
user interface configured to receive direct input from the user is disclosed by
Goetz III which explicitly teaches that a user may use numeric input (e.g.,
keyboards), not up or down arrows, to directly input specific target values
for the electrodes. See, e.g., Goetz III 1116.
We determine that it would have been obvious to modify the keyboard
and other user interface devices disclosed by Goetz I, Goetz II, and Thacker
to allow the user to directly input specific target values for the electrodes
using a keyboard or other interface devices as disclosed by Goetz III,
because it permits physicians and other personnel to select and change
numerous possible electrode combinations and large parameter ranges, and
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simultaneously deliver multiple therapy configurations quickly and
efficiently. See, e.g., Goetz III, 14—7. For the dependent claims, we adopt
the Examiner’s findings as our own.
Claim 2
Claim 2 recites that “the new stimulation amplitude value is a
fractionalized electrical current value.” Claim 2 is argued separately.
Appeal Br. 9. In the interest of compact prosecution, and as our first new
ground of rejection relies upon the Examiner’s findings with respect to claim
2, we address Appellants’ arguments pertaining to claim 2 below.
Referring to Figure 25 of Goetz I, the Examiner finds that Goetz I
“discloses shifting stimulation from one electrode to another in incremental
steps that are a fraction of the final stimulation amplitude value. In other
words, the incremental steps are a percentage of the final value. . . . [T]he
values assigned to the electrodes are percentages that add up to 100, which is
the definition presently argued by [Appellants].” Advisory Action (mailed
Sept. 22, 2014), 3 (citing Goetz 1,1188, Fig. 25).
Appellants argue that the Examiner’s finding is wrong because:
The Fig. 25 increments do not add up to 100. The first increment
is a little less than 20%. The second increment is about 30%.
The third increment is about 50%. The fourth increment is about
65%, and so forth. These increments add up to well over 100%.
So, it is not understood what the Examiner is summing to equal
100.
Appeal Br. 9.
In response, the Examiner explains the data disclosed in Figure 25 are
cumulative values, not discrete values independent of one another:
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Fig. 25 of Goetz discloses the jump in amplitude along a plurality
of steps during a shifting cycle. The jump or increase from step
0 to step 1 is roughly 20%; the jump from step 1 to step 2, roughly
another 20%, and so on, [wjherein the jumps are progressively
less along the curve. It is clear from approximately step 8 that
the summation of changes from each step sum to 100% and not
“well over 100%” as argued. The Examiner contends Appellant
has misinterpreted the increments shown by the Figure.
Particularly, the first increment is indeed a little less than 20%
but the second increment is not “about 30%” as argued. Instead,
the second increment is the difference between the final value
(about 30%) and the value of step 1 (about 20%). If the
increments were as large as argued by Appellant, the value of
step 2 on the chart would be about 50% and not approximately
30-40% as illustrate[d] [jin the figure. The values are cumulative
values and not discrete values independent of one another.
Ans. 13—14. Appellants do not address these findings by the Examiner, and,
thus, do not show error in the Examiner’s finding that Goetz I discloses the
limitation recited in claim 2. Accordingly, Appellants do not apprise us of
error.
Claim 17
Claim 17 recites that “the user interface is configured for receiving an
auto-adjust command from the user subsequent to the direct user input, and
wherein the display screen is configured for displaying the new
fractionalized electrical current values in respective association with
graphical representation of the adjusted electrode set in response to the user
command.” Claim 17 is argued separately. Appeal Br. 12. In the interest of
compact prosecution, and as our third new ground of rejection relies upon
the Examiner’s findings with respect to claim 17, we address Appellants’
arguments pertaining to claim 17 below.
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The Examiner finds that “Thacker discloses an E-troll function which
auto-shifts and auto-normalizes the fractionalized electrical current to
maintain a total of 100%.” Final Act. 13 (citing Thacker || 83—87, 99).
In response, Appellants argue that “it is irrelevant that the E-troll
function can be selected after initial manual input by the user. What is
relevant is that actuation of the E-troll command does not display the current
values that were assigned in response to the manual input.” Appeal Br. 12.
The Examiner explains:
Thacker discloses inputting stimulation parameters via a
keypad/keyboard and displaying the values via a display (par.
[0072-0075]; Fig. 11). This meets the requirement of Claim 15,
from which Claim 17 depends. Claim 17 then requires receiving
an auto-adjust command from the user subsequent the direct user
input. Due to this requirement and the requirement of Claim 15,
the new fractionalized electrical values have already been
displayed, i.e. when the direct user input was received. To this
end, the limitation in Claim 17 regarding displaying the new
fractionalized current is redundant. . . .
However, if Claim 17 is indicating that the new
fractionalized values are displayed in response to selecting an
auto-adjust command, the Examiner notes that Thacker discloses
this as well. Particularly, Thacker then discloses receiving an
auto-adjust command from the user in the form of an E-Troll
function (par. [0083]) which is an automated process that
replaces a manual electrode selection. The selection of the E-
TROLL function displays the new fractionalized electrical
values input by a physician and ultimately starts or finishes the
electrode testing procedure using the input values (par. [0082-
0087]; Fig. 11-20).
Ans. 15—16. Appellants do not address the Examiner’s findings, and thus,
do not show error in the Examiner’s finding that Thacker discloses the
recited limitation in claim 17.
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DECISION
For the above reasons, the Examiner’s rejection of claims 1—6, 8—12,
19, and 22 under 35 U.S.C. § 102(b) as anticipated by Goetz I is
REVERSED.
The Examiner’s rejection of claims 1, 6, and 7 under 35 U.S.C.
§ 102(b) as anticipated by Goetz II is REVERSED.
The Examiner’s rejection of claims 1,2, 10, 13, and 15—18 under 35
U.S.C. § 102(b) as anticipated by Thacker is REVERSED.
The Examiner’s rejection of claims 1 and 20 under 35 U.S.C. § 102(b)
as anticipated by Goetz III is AFFIRMED.
We enter NEW GROUNDS OF REJECTION pursuant to our
authority under 37 C.F.R. § 41.50(b) as follows:
1. Claims 1—6, 8—12, 19, and 22 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Goetz I and Goetz III.
2. Claims 1, 6, and 7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Goetz II and Goetz III.
3. Claims 1, 2, 10, 13, and 15—18 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Thacker and Goetz III.
37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
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examiner, in which event the prosecution will be remanded to the
examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
Further guidance on responding to a new ground of rejection can be found in
the Manual of Patent Examining Procedure § 1214.01.
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; 37 C.F.R, $41.50(b)
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