Ex Parte Starkebaum et alDownload PDFPatent Trial and Appeal BoardFeb 23, 201612236836 (P.T.A.B. Feb. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/236,836 09/24/2008 71996 7590 02/25/2016 SHUMAKER & SIEFFERT, P.A 1625 RADIO DRIVE, SUITE 300 WOODBURY, MN 55125 FIRST NAMED INVENTOR Warren L. Starkebaum 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. 1023-710US01/ P0028348.0l CONFIRMATION NO. 8682 EXAMINER GEDEON, BRIANT ART UNIT PAPER NUMBER 3766 NOTIFICATION DATE DELIVERY MODE 02/25/2016 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 WARREN L. STARKEBAUM, CHARLENE X. YUAN, ROLAND C. MAUDE-GRIFFIN, and LUIZ GERALDO PIVOTTO Appeal2013-006307 Application 12/236,836 Technology Center 3700 Before JILL D. HILL, LISA M. GUIJT, and JASON W. MEL VIN, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Warren L. Starkebaum et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 7-29 and 34--41. 1 We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. 1 Claims 1---6 and 30-33 have been withdrawn from consideration. Final Act. 1. Appeal2013-006307 Application 12/236,836 CLAIMED SUBJECT MATTER Independent claim 7, reproduced below, illustrates the claimed subject matter. 7. A device comprising: means for receiving a request to deliver electrical gastric stimulation therapy to a patient; means for prohibiting delivery of the gastric stimulation therapy if the request is received within a lockout period following a previous delivery of gastric stimulation therapy; and means for permitting delivery of the gastric stimulation therapy if the request is not received within a lockout period following the previous delivery of gastric stimulation therapy. Appeal Br. Claims App. REJECTION Claims 7-29 and 34--41 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Foley '780 (US 2002/0072780 Al, pub. June 13, 2002), Mann (US 2002/0107476 Al, pub. Aug. 8, 2002), and Foley '638 (US 2005/0222638 Al, pub. Oct. 6, 2005). OPINION The Examiner finds that Foley '780 discloses a gastric stimulator delivering electrical stimulation controlled by an information processor and triggered by gastric electrical activity. Final Act. 5. The Examiner finds that Foley '780 fails to disclose the claimed lockout period, but finds this disclosure in Mann. Id. at 5---6 (citing Mann i-f 86). The Examiner then finds that Foley '638 discloses a preference to manage the amount of electrical stimulation applied to a patient to prevent patient desensitization and increase power supply longevity. Id. at 6-7 (citing Foley '638 i-fi-121, 22). 2 Appeal2013-006307 Application 12/236,836 The Examiner concludes that, "[i]n view of the teachings of Foley '638," it would have been obvious to one skilled in the art to modify the system of Foley '780 "to implement the therapy lockout period taught by Mann et al. as a safety precaution to prevent excessive electrical stimulation from causing tissue damage, conditioning (or desensitization) to the electrostimulation pattern, and reduce drain on battery supply." Id. at 7. Despite utilizing separate headings for Groups 1-12, Appellants' arguments can be combined to address Groups 1, 3, 5, and 7 together, Groups 2, 4, 6, and 8 together, and Groups 9-12 together. Groups 1, 3, 5, and 7: Lockout Period Prohibits Delivery Groups 1, 3, 5, and 7 include claims 7, 8, 10-12, 13, 14, 16-20, 22- 26, 28, and 29. Regarding these claims, Appellants argue that one skilled in the art would not reasonably look to Mann to solve a problem in Foley '780 that is already solved by Foley '638. Appeal Br. 9, 10 ("it is unclear why one of ordinary skill in the art would look to iviann to solve problems recognized in Foley '63 8 instead of implementing the solutions to those problems as laid out in Foley '638"). This logic, however, is contrary to the Federal Circuit's holding that the disclosure of desirable alternatives does not necessarily negate a suggestion for modifying the prior art to arrive at the claimed invention. See In re Fulton, 391 F.3d 1195 (Fed. Cir. 2004); KSR Int'] Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). The existence of other alternatives, regardless of whether they provide a solution that preceded the Examiner's proposed combination, does not render the Examiner's proposed combination improper. Thus, we are not persuaded by Appellants' argument. The Examiner need not explain why one skilled in the art would choose Mann's lockout period instead of shutting down as in 3 Appeal2013-006307 Application 12/236,836 Foley '638, because the Examiner considered the two known alternatives yielding predictable results. Final Act. 3; Ans. 8. Appellants reply, regarding the Examiner's contention of predictable results, that "the addition of a lockout period to Foley '780 does not improve the Foley '780 device in a predictable manner (let alone in the manner predicted by Mann)," because adding Mann's infusion lockout period "would not yield the predictable result of reducing the risk of overdosing on therapy" as overdosing on stimulation is not possible. Appeal Br. 12. This argument is not persuasive, because the combination need not attain the result predicted by Mann to be "predictable." Appellants have not explained why the combination of Foley '780 and Mann would not yield the predictable result of preventing desensitization and battery loss as proposed by the Examiner and set forth in Foley '638. Appellants also argue, regarding the shutdowns of Foley '638, that its shutdowns are not based on "when therapy was last applied or whether it may be applied again." Appeal Br. 12. We are not persuaded by this argument because this language is not recited in the claims of Groups 1, 3, 5, and 7. Appellants next argue that Foley '638 shuts its device down "based on detection that the patient has become conditioned, and not [based on whether] a lockout period is currently occurring." Appeal Br. 12. This argument is not persuasive, because it does not address the combination of references proposed by the Examiner, wherein Foley '638 is relied upon solely to teach the desirability of preventing battery drain and desensitization to the electrostimulation pattern. Final Act. 7. It is Mann that the Examiner relies on to teach treatment prevention during a lockout period. 4 Appeal2013-006307 Application 12/236,836 Appellants then argue that "adding the lockout period may in fact prevent Foley '780 from providing stimulation when required, e.g. in response to normal intrinsic activity as sensed by the Foley '780 device." Appeal Br. 12. This allegation, however, is mere attorney argument without evidence or even an explanation, and we therefore are not persuaded. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the place of evidence."). Appellants lastly argue that the Examiner's conclusion of obviousness was improper because "just because a feature from one reference may be added to another, i.e. it is technically possible and feasible to do so, does not mean that such an addition represents an improvement or would be viewed as advantageous in any way." Appeal Br. 13. This argument fails to address the Examiner's stated rationale, and we are not persuaded that the Examiner's rationale lacks a reasonable basis. For the reasons set forth above, we sustain the rejection as it applies to Groups 1, 3, 5, and 7, including claims 7, 8, 10-12, 13, 14, 16-20, 22-26, 28, and 29. Groups 2, 4, 6, and 8: Prohibits Delivery after Specified Time Period Groups 2, 4, 6, and 8 include claims 9, 15, 21, and 27, which recite "prohibiting delivery of the gastric stimulation therapy if the request is not received within a time period specified by a therapy schedule." Appeal Br. 24--27 (Claims App.). The Examiner initially found this teaching in Mann. Final Act. 4 (citing Mann i-f 151). Appellants argue that Mann's basal rate delivery program provides a baseline amount of insulin delivered throughout the day and allows boluses after eating, which does not disclose a lockout period prohibiting delivery of 5 Appeal2013-006307 Application 12/236,836 the gastric stimulation therapy if the request is not received within a time period specified by a therapy schedule. Appeal Br. 14. The Examiner responds that the teaching in Foley '638 to prevent desensitization and battery drain would render this limitation obvious. Ans. 12 ("one of ordinary skill in the art would be motivated to employ [means] to deny a request for therapy outside of a programmed therapy time in order to prevent adverse events from occurring due to over applied stimulation therapy.") We are persuaded by Appellants' argument regarding Groups 2, 4, 6, and 8. The Examiner has not adequately explained how the teaching in Foley '638 to prevent desensitization and battery drain would render obvious the recited "prohibiting delivery of gastric stimulation therapy when a request is not received within a time period specified by a therapy schedule." Accordingly, we do not sustain the Examiner's rejection of as it applies to Groups 2, 4, 6, and 8, including claims 9, 15, 21, and 27. Groups 9-12: Lockout Period Follows Each Delivery of Therapy Groups 9-12 include claims 34--41. Claims 34, 3 6, 3 8, and 40 recite that the lockout period "follows each delivery of gastric stimulation therapy." Appeal Br. 28-29 (Claims App.). Claims 35, 37, 39, and 41 depend therefrom, respectively. The Examiner finds that Mann teaches this limitation, because its lockout period occurs immediately following an insulin bolus delivery. Final Act. 8 (citing Mann i-f 86); Ans. 14. Appellants argue that setting a lockout period following an insulin bolus delivery, as described in Mann, is not the same as the claimed lockout period because "setting a lockout period following therapy is not the same as [setting] a lockout period following each delivery of gastric stimulation." 6 Appeal2013-006307 Application 12/236,836 Appeal Br. 19. Appellants' arguments regarding Mann's therapy delivery do not address the rejection proposed by the Examiner, which determines that it would have been obvious to employ a lockout period (as taught by Mann) following the Foley '780 gastric stimulation therapy delivery. Final Act. 8; Ans. 14. We discern no error in the Examiner's findings and conclusions as they pertain to Groups 9-12. Accordingly, we sustain the Examiner's rejection of claims 34--41. DECISION We AFFIRM the rejection of claims 7, 8, 10-14, 16-20, 22-26, 28, 29, 34--41under35 U.S.C. § 103(a) as unpatentable over Foley '780, Mann, and Foley '638. We REVERSE the rejection of claims 9, 15, 21, and 27 under 35 U.S.C. § 103(a) as unpatentable over Foley '780, Mann, and Foley '638. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 7 Copy with citationCopy as parenthetical citation