Ex Parte Rezai

Patent Trial and Appeal Board

Mar 16, 2017

14064447 (P.T.A.B. Mar. 16, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/064,447 10/28/2013 Ali R. Rezai CCF-020127 US CON 2 4353
26294 7590 03/20/2017
TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300 EAST NINTH STREET, SUITE 1700
CLEVELAND, OH 44114
EXAMINER
LEVICKY, WILLIAM J
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
03/20/2017 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):
rkline @ tarolli. com
docketing@tarolli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALI R. REZAI
Appeal 2015-0072051
Application 14/064,4472
Technology Center 3700
Before JOSEPH A. FISCHETTI, KENNETH G. SCHOPFER, and
MATTHEW S. MEYERS, Administrative Patent Judges.
SCHOPFER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 33 and 36—38. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references the Appeal Brief (“Appeal Br.,” filed Dec. 26,
2014) and Reply Brief (“Reply Br.,” filed July 23, 2015), and the
Examiner’s Answer (“Ans.,” mailed June 8, 2015) and Final Office Action
(“Final Act.,” mailed Dec. 3, 2014).
2 According to Appellants, the real party in interest is The Cleveland Clinic
Foundation. Appeal Br. 3.
Appeal 2015-007205
Application 14/064,447
BACKGROUND
According to Appellant, “[t]he present invention relates to methods of
treating medical conditions by electrical and/or chemical neuromodulation
of target sites in the sympathetic nervous system.” Spec. 1.
CLAIMS
Claims 33 and 36—3 83 are on appeal. Claim 33 is the only
independent claim on appeal and recites:
33. A method of alleviating a psychological medical disorder
in a patient suffering therefrom, said method comprising the
steps of:
placing an electrode in contact with a sympathetic
ganglion of a sympathetic nerve chain (SNC) of the patient; and
activating the electrode to initiate application of an
electrical signal having a voltage range of 0.1 microvolts to
about 20V to the sympathetic ganglion to alleviate the patient's
psychological medical disorder, wherein the psychological
medical disorder is autism.
Appeal Br. 2.
REJECTION
The Examiner rejects claims 33 and 36—38 under 35 U.S.C. § 103(a)
as unpatentable over Yun4 in view of Schurig.5
DISCUSSION
The Examiner relies on Yun as disclosing a method as claimed except
that Yun does not expressly disclose “wherein the psychological medical
3 The remaining claims have either been cancelled or withdrawn. See
Appeal Br. 11—13.
4 Yun et al., US 2004/0249416 Al, pub. Dec. 9, 2004.
5 Schurig et al., US 5,092,835, iss. Mar. 3, 1992.
2
Appeal 2015-007205
Application 14/064,447
disorder is autism.” Final Act. 4. The Examiner further relies on Schurig as
teaching the use of nerve stimulation to treat autism, and the Examiner
concludes that it would have been obvious to modify Yun’s method to treat
autism. Id. at 4—5.
Appellant does not dispute that Yun teaches a method as found by the
Examiner. Rather, Appellant argues only that there is “no reason to modify
the methods of Yun with the methods of Schurig because the two references
are directed to different purposes, pathologies, target sites, and
methodologies.” Appeal Br. 6. More specifically, Appellant asserts that
“Yun is directed to improving or treating clear autonomic functions whereas
Schurig is heavily directed to treating or improving neurodevelopmental or
neuropsychological functions” and that “Shurig never mentions stimulating
any structures of the autonomic nervous system. Yet this is the very essence
of Yun.” Id. at 7.
As discussed below, we are not persuaded of error in the rejection by
Appellant’s arguments.
As an initial matter, we note that the claim limitation at issue here is
recited in a “wherein” clause that recites only an intended use of the claimed
method and does not provide any specific limitation on the performance of
the method steps. Thus, because Appellant does not dispute that Yun
discloses each of the placing and activating steps claimed, the question
before us is only whether one of ordinary skill in the art would have found it
obvious to use the method of Yun on an additional disorder, i.e. autism,
based on the teachings of Yun and Schurig. We agree with the Examiner
that the claimed new use for Yun’s method would have been obvious and are
not persuaded otherwise by Appellant’s arguments. In particular, given
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Application 14/064,447
Yun’s disclosure that the method may be used to treat certain psychological
disorders (see Yun 1111); the fact that both references use electrical
stimulation of the nervous system to treat disorders (see id. at Abstract; see
also Schurig, Abstract); and the fact that Schurig uses such stimulation to
treat autism, we find that one of ordinary skill in the art would have at least
found it obvious to try Yun’s method to treat additional psychological
disorders, including autism. See KSR Int’l. Co. v. Teleflex, Inc., 550 U.S.
398, 421 (2007). Finally, we consider this finding to be consistent with the
Examiner’s conclusion that “such a modification would provide the
predictable results of a method and system for treating neurological
disorders including autism.” Final Act. 5.
For these reasons, we are not persuaded of reversible error in the
rejection, and thus, we sustain the rejection of claims 33 and 36—38.
CONCLUSION
For the reasons set forth above, we AFFIRM the rejection of
claims 33 and 36—38.
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
4