Ex Parte Skelton et al

Patent Trial and Appeal Board

Jun 28, 2016

12110843 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/110,843 04/28/2008
71996 7590 06/30/2016
SHUMAKER & SIEFFERT, P.A
1625 RADIO DRIVE, SUITE 100
WOODBURY, MN 55125
FIRST NAMED INVENTOR
Dennis M. Skelton
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.
1023-624US01 6226
EXAMINER
WU, TONGE
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
pairdocketing@ssiplaw.com
medtronic _neuro _ docketing@cardinal-ip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DENNIS M. SKELTON, JOSEPH J. NOLAN,
NATHAN A. TORGERSON, WENDEL. DEWING,
TODD V. SMITH, and SHY AM GOKALDAS
Appeal2014-004434
Application 12/110,843
Technology Center 3700
Before MICHAEL L. HOELTER, LISA M. GUIJT, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
STATEMENT OF CASE
Appellants, Dennis M. Skelton et al., appeal under 35 U.S.C. § 134
from the Examiner's decision rejecting claims 1--4, 6-15, 17, 19-30, 32--41,
43, 45-56, 58---67, 69, and 71-80. 1, 2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
Appellants identify the real party in interest as Medtronic, Inc.
Appeal Br. 3.
2 Claims 5, 18, 31, 44, 57, and 70 are cancelled (see Response to
Requirement for Election of Species, dated December 21, 2011 ), and claims
16, 42, and 68 are withdrawn from consideration (Final Act. 1 ).
Appeal2014-004434
Application 12/110,843
THE CLAIMED SUBJECT MATTER
The claims are directed to "electrical stimulation therapy and, more
particularly, to selection of electrode combinations for delivery of electrical
stimulation therapy to a patient." Spec. i12. Claims 1, 27, 53, and 79 are
independent. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method comprising:
causing an electrical stimulator to select a first electrode
combination of a plurality of electrode combinations, wherein
the first electrode combination, when active, delivers electrical
stimulation from the electrical stimulator to a patient;
receiving user input indicating a parameter adjustment of
an electrode combination shift parameter, the parameter
adjustment indicating a shift to a second, different electrode
combination of the plurality of electrode combinations, and each
of the plurality of electrode combinations having a substantially
similar electrode pattern,
wherein the parameter adjustment consists of a selection
of one of a plurality of parameter values of the electrode
combination shift parameter to indicate the shift to the second
electrode combination,
wherein each of the plurality of parameter values
comprises one or more characters, symbols, or icons, and
wherein each of the plurality of parameter values
represents a particular one of the plurality of electrode
combinations; and
causing the electrical stimulator to select the second
electrode combination in response to the user input.
2
Appeal2014-004434
Application 12/110,843
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Hrdlicka
Law
Mann
Goetz
us 5,443,486
us 5,938,690
us 6,052,624
US 2007 /0203544 Al
REJECTIONS
The Examiner made the following rejections:
Aug. 22, 1995
Aug. 17, 1999
Apr. 18, 2000
Aug.30,2007
1. Claims 1, 2, 4, 6-15, 17, 19, 20, 22-28, 30, 32--41, 43, 45, 46,
48-54, 56, 58---67, 69, 71, 72, and 74--80 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Mann and Law.
2. Claims 3, 29, and 55 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mann, Law, and Goetz.
3. Claims 21, 47, and 73 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Mann, Law, and Hrdlicka.
Appellants seek our review of these rejections.
OPINION
REJECTION 1
Claims 1, 2, 4, 7-15, 17, 19, and 22-26
Appellants argue claims 1, 2, 4, 7-15, 17, 19, and 22-26 as a group.
Appeal Br. 7-12. We select claim 1 as the representative claim, and claims
2, 4, 7-15, 17, 19, and 22-26 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv) (2015).
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Appeal2014-004434
Application 12/110,843
The Examiner finds that Mann discloses all of the limitations of claim
1 except for the limitation reciting a user input indicating a "plurality of
parameter values compris[ing] one or more characters, symbols, or icons."
Final Act. 4--5. The Examiner finds that this missing limitation is disclosed
by Law, which "teaches organizing electrode combinations by selection of
one of a plurality of alphanumeric characters." Id.
In response, Appellants present several arguments. First, Appellants
argue that
the Examiner has not cited to any portion of Law that discloses
receiving user input indicating a parameter adjustment of an
electrode combination shift parameter, the parameter adjustment
consisting of selection of one of a plurality of parameter values
of the electrode combination shift parameter to indicate the shift,
each of the plurality of parameter values comprising one or more
characters, symbols, or icons. Indeed, the Examiner has not cited
to any portion of Law that discloses selection of one or more
characters, symbols, or icons in relation to the different electrode
combinations in FIGS. 9A-9C.
Appeal Br. 10-11. Appellants' arguments, however, do not address the
Examiner's finding that Mann, not Law, discloses the limitations of claim 1
relating to the "user input" and "selection" limitations. Final Act. 4--5.
While Mann does not disclose the limitation requiring that "the user input is
a selection of one of a plurality of alphanumeric characters or icons," the
Examiner finds that it would have been obvious "to modify Mann as taught
by Law to include organizing electrode combinations by selection of one of
a plurality of alphanumeric characters, each parameter value representing a
particular electrode combination, in order to easily identify different
electrode combinations." Final Act. 4--5.
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Application 12/110,843
Appellants also argue that "[i]t is unclear how labeling an electrode
pattern using the teachings of Law, as proposed by the Examiner, would in
any way help a user, as the directional input device of Mann is intended to
allow the user to make selections 'without being cognizant of actual
combinations or variables.'" Reply Br. 6. Appellants' arguments do not
address the Examiner's finding that:
Mann already clearly discloses various embodiments of user
input:
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The combination with Law is simply incorporating the feature of
labeling electrode combinations. Thus, the Examiner's position
is that one of ordinary skill in the art would combine Mann and
Law such that a user input is used to select labeled electrode
patterns, or in other words, user input comprising a parameter
adjustment of an electrode combination shift parameter which
indicates an electrode combination shift as claimed.
Ans. 4--5.
Thus, Appellants' arguments attacking the references individually are
not responsive to the rejection as articulated by the Examiner. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness
cannot be established by attacking the references individually where the
rejection is based upon the teachings of a combination of references.").
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Appeal2014-004434
Application 12/110,843
Appellants also argue that:
modifying the system of Mann as proposed by the Examiner to
incorporate the functionality of a computer disclosed by Law into
the system of Mann, which includes the directional input device
of Mann, would presumably modify the component of the Mann
system that facilitates the directional programming, thus
changing the principle of operation of the system of Mann.
Appeal Br. 11. Appellants further argue that "modif1ying] Mann in view of
Law 'in order to easily identify different electrode combinations' is in
error," and "appears to lack a rational underpinning." Id. at 12. According
to Appellants, "the Examiner has not explained how adding labels of Law to
the system of Mann, which uses a directional input device to allow a
programming without being cognizant of actual electrode combinations and
variables, would allow a clinician or patient to quickly select an electrode
combination." Reply Br. 7.
Appellants' arguments, however, do not address the Examiner's
explanation:
[T]he principle of operation of Mann is to allow a clinician to
more easily program different electrode combinations by using a
steering interface, rather than manually/arbitrarily setting anodes
and cathodes and other electrode parameters. Thus, the labeling
of Law aids the principle of operation in Mann.
Regarding motivation to combine, Appellant asserts that
the motivation to combine (to easily identify different electrode
combinations) is in error, since Mann alone already describes
advantages such as allowing a clinician to quickly select an
electrode combination. However, the additional advantages of
providing labels taught by Law are clearly evident to one of
ordinary skill in the art.
Ans. 5 (emphasis added). Again, Appellants' arguments are not responsive
to the rejection as articulated by the Examiner. In re Merck & Co., 800 F .2d
at 1097.
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Appeal2014-004434
Application 12/110,843
Appellants' arguments do not apprise us of error by the Examiner and
are unconvincing. We sustain the Examiner's rejection of claim 1 under 35
U.S.C. § 103(a) in view of Mann and Law. Because Appellants do not
allege any other patentable distinctions for claims 2, 4, 7-15, 17, 19, and 22-
26, we likewise sustain the Examiner's rejections of these claims under 35
U.S.C. § 103(a).
Claim 6
With respect to claim 6, Appellants argue that "Mann fails to disclose
that each of the 'different directions' represents a different electrode
combination. Instead, the cited portions of Mann only describe moving the
joystick up, down, right, and left to reach all of the electrode combination."
Appeal Br. 13 (emphasis added). Appellants seem to understand that
Mann's joystick needs to move in all its directions in order to reach all of the
electrode combinations. Because movement of Mann's joystick in all
directions is needed to reach all the electrode combinations, Appellants do
not adequately explain how moving Mann's joystick in only a single
direction also reaches all the electrode combinations, instead of just one
combination. Furthermore, the Examiner explains that "the plurality of
parameter values shown in Law (Figure 7, 8: Combo II 4, Combo 2/ 4)
clearly represent different electrode combinations as claimed." Ans. 5
(emphasis added). Appellants' argument attacking Mann individually,
rather than the combined teachings of Mann and Law, is not responsive to
the rejection as articulated by the Examiner, and is not convincing. In re
Merck & Co., 800 F.2d at 1097. We sustain the Examiner's rejection of
claim 6.
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Application 12/110,843
Claim 80
With respect to claim 80, Appellants assert that the Examiner did not
"provide any remarks specific to the rejection of claim 80." Appeal Br. 13-
14. In response, the Examiner explains that "Hrdlicka sufficiently teaches
prohibiting parameter adjustment beyond preset limits, and that one of
ordinary skill in the art would apply that same teaching to the electrode
shifting of Mann and Law for the same benefits of protecting a patient from
unsafe or improperly programmed stimulation." Ans. 5---6. Appellants do
not contest the basis for the rejection, and the Examiner's rejection of claim
80 is sustained.
Claims 27, 28, 30, 33--40, 41, 43, 45, 46, and 48-52
Appellants argue claims 27, 28, 30, 33--40, 41, 43, 45, 46, and 48-52
as a group. Appeal Br. 7-12. We select claim 27 as the representative
claim, and claims 28, 30, 33--40, 41, 43, 45, 46, and 48-52 stand or fall with
claim 27. 37 C.F.R. § 41.37(c)(l)(iv) (2015).
Appellants argue that
[f]or at least the reasons provided above with respect to
independent claim 1, the Examiner failed to establish a prima
facie case for non-patentability of independent claim 27 over
Mann in view of Law. Thus, the Examiner's final rejection of
independent claim 27 and claims 28, 30, 33-40, 41, 43, 45, 46,
and 48-52, which depend from independent claim 27, under 35
U.S.C. § 103(a) over Mann in view of Law was in error and
should be reversed.
Appeal Br. 14. For the reasons discussed with respect to claim 1 above,
Appellants' arguments are not persuasive, and the Examiner's rejection of
claim 27 is sustained. Claims 28, 30, 33--40, 41, 43, 45, 46, and 48-52 fall
with claim 27.
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Appeal2014-004434
Application 12/110,843
Claim 32
Appellants argue that
[f]or at least the reasons provided above with respect to
independent claim 27 and dependent claim 6, the Examiner failed
to establish a prima facie case for non-patentability of claim 32
over Mann in view of Law. Thus, the Examiner's final rejection
of claim 32 under 35 U.S.C. § 103(a) over Mann in view of Law
was in error and should be reversed.
Appeal Br. 14. For the reasons discussed with respect to claim 27 and claim
6 above, Appellants' arguments are not persuasive, and the Examiner's
rejection of claim 32 is sustained.
Claims 53, 54, 56, 59----67, 69, 71, 72, and 74--78
Appellants argue claims 53, 54, 56, 59----67, 69, 71, 72, and 74--78 as a
group. Appeal Br. 7-12. We select claim 53 as the representative claim,
and claims 54, 56, 59-67, 69, 71, 72, and 74--78 stand or fall with claim 53.
37 C.F.R. § 41.37(c)(l)(iv) (2015).
Appellants argue that
[f]or at least the reasons provided above with respect to
independent claim 1, the Examiner failed to establish a prima
facie case for non-patentability of independent claim 53 over
Mann in view of Law. Thus, the Examiner's final rejection of
independent claim 53 and respective dependent claims 54, 56,
59-67, 71, 72, and 74-78 under 35 U.S.C. § 103(a) over Mann in
view of Law was in error and should be reversed.
Appeal Br. 15. For the reasons discussed with respect to claim 1 above,
Appellants' arguments are not persuasive, and the Examiner's rejection of
claim 53 is sustained. Claims 54, 56, 59----67, 71, 72, and 74--78 fall with
claim 53.
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Appeal2014-004434
Application 12/110,843
Claim 58
Appellants argue that
[f]or at least the reasons provided above with respect to
independent claim 53 and dependent claim 6, the Examiner failed
to establish a prima facie case for non-patentability of claim 58
over Mann in view of Law. Thus, the Examiner's final rejection
of claim 58 under 35 U.S.C. § 103(a) over Mann in view of Law
was in error and should be reversed.
Appeal Br. 15. For the reasons discussed with respect to claim 53 and 6
above, Appellants' arguments are not persuasive, and the Examiner's
rejection of claim 58 is sustained.
Claim 79
Appellants argue that
[f]or at least the reasons provided above with respect to
independent claim 1, the Examiner failed to establish a prima
facie case for non-patentability of independent claim 79 over
Mann in view of Law. Thus; the Examiner's final rejection of
independent claim 79 under 35 U.S.C. § 103(a) over Mann in
view of Law was in error and should be reversed.
Appeal Br. 16. For the reasons discussed with respect to claim 1 above,
Appellants' arguments are not persuasive, and the Examiner's rejection of
claim 79 is sustained.
REJECTION2
Claims 3, 29, and 55
Appellants argue claims 3, 29, and 55 as a group. Appeal Br. 7-12.
We select claim 3 as the representative claim, and claims 29 and 55 stand or
fall with claim 3. 37 C.F.R. § 41.37(c)(l)(iv) (2015).
Appellants argue that
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Appeal2014-004434
Application 12/110,843
[c]laims 3, 29, and 55 depend from independent claims 1,
27, and 53, respectively. Goetz fails to overcome the
fundamental deficiencies identified above with respect to Mann
in view of Law. For at least the reasons provided above with
respect to the independent claims, the Examiner failed to
establish a primafacie case for non-patentability of claims 3, 29,
and 55 over the applied art.
Appeal Br. 16. For the reasons discussed with respect to claim 1 above,
Appellants' arguments are not persuasive, and the Examiner's rejection of
claim 3 is sustained. Claims 29 and 55 fall with claim 3.
REJECTION3
Claims 21, 4 7, and 73
Appellants argue claims 21, 47, and 73 as a group. Appeal Br. 7-12.
We select claim 21 as the representative claim, and claims 4 7 and 73 stand
or fall with claim 21. 37 C.F.R. § 41.37(c)(l)(iv) (2015).
Appellants argue that "claim 21 requires prohibiting parameter
adjustment if a program associated with a first electrode combination is
indicated as not being shiftable, a feature which is neither disclosed nor
suggested by the Abstract of Hrdlicka." Appeal Br. 16-17. Appellants,
however, admit that
The Abstract of Hrdlicka discloses, among other things,
means for comparing a stimulation pulse parameter limit value
and a programmed parameter value, and means for preventing an
alteration of the programmed parameter value, unless it is within
stimulation pulse parameter limits. The Abstract of Hrdlicka
further discloses that the stimulation pulse parameters may
include pulse amplitude, pulse width, and pulse rate and the
programmed parameter limit values may be upper and lower
limits.
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Application 12/110,843
Appeal Br. 17. Thus, Hrdlicka teaches that a parameter should not be
adjusted if a program associated with a first electrode combination is beyond
a preset limit, that is, it should not be shiftable as recited in claim 21. The
Examiner also explains, in part, that Hrdlicka "teaches prohibiting parameter
adjustment beyond preset limits, and that one of ordinary skill in the art
would apply that same teaching to the electrode shifting of Mann and Law
for the same benefits of protecting a patient from unsafe or improperly
programmed stimulation." Ans. 5---6; see also Final Act. 7. Appellants have
not shown us how the Examiner erred. Appellants' arguments are not
persuasive, and the Examiner's rejection of claim 21 is sustained. Claims 4 7
and 73 fall with claim 21.
DECISION
For the above reasons, the Examiner's rejection of claims 1, 2, 4, 6-
15, 17, 19,20,22-28,30,32--41,43,45,46,48-54,56,58---67,69, 71, 72,
and 74--80 under 35 U.S.C. § 103(a) as being unpatentable over Mann and
Law is AFFIRMED.
The Examiner's rejection of claims 3, 29, and 55 under 35 U.S.C.
§ 103(a) as being unpatentable over Mann, Law, and Goetz is AFFIRMED.
The Examiner's rejection of claims 21, 47, and 73 under 35 U.S.C.
§ 103(a) as being unpatentable over Mann, Law, and Hrdlicka is
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv) (2015).
AFFIRMED
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