Ex Parte Sterrantino et al

Patent Trials and Appeals Board

Jan 31, 2019

10901933 - (D) (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/901,933 07/29/2004
25281 7590 02/04/2019
DICKE, BILLIG & CZAJA
FIFTH STREET TOWERS
100 SOUTH FIFTH STREET, SUITE 2250
MINNEAPOLIS, MN 55402
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Peter P. Sterrantino
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.
Ml92.161.101/PD0000271.00 9204
EXAMINER
TOWA,RENET
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
02/04/2019 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.PA TENTS@dbclaw.com
dmorris@dbclaw.com
DBCLA W-Docket@dbclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER P. STERRANTINO, DAVID C. HACKER, and
BRET M. BERRY
Appeal2018-005692
Application 10/901,93 3
Technology Center 3700
Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Peter P. Sterrantino et al. ("Appellants") appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision to reject claims 1-13, 16-27, 36, and
37. Claims 14, 15, and 28-35 have been canceled. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal2018-005692
Application 10/901,933
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to a stimulator handpiece useful as
part of an evoked potential monitoring system and to remotely dictate a
changeable stimulation energy level delivered by a stimulus probe otherwise
carried by the handpiece." Spec. 1 :6-8, Figs. 1, 2. Claims 1 and 22 are
independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. An evoked potential monitoring system comprising:
a control unit including stimulator circuitry;
cabling including a control cable and an energy supply
cable each independently electrically coupled to the
control unit; and
a probe assembly electrically coupled to the control unit
through the control cable, the probe assembly
including:
a stimulus probe electrically coupled to the energy
supply cable, and
a stimulator handpiece selectively maintaining the
stimulus probe, the handpiece including:
a handle defining an enclosed region,
control circuitry disposed within the enclosed
region and electrically connected to
the stimulator circuitry through the
control cable,
a switch electrically coupled to the control
circuitry and extending from the
enclosed region to an exterior portion
of the handle, the switch movable to a
plurality of positions, the handle
fluidly sealed between the exterior
portion to the enclosed region at the
switch;
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Application 10/901,933
wherein the system is adapted such that movement of the
switch to one of the plurality of positions relative to
the handpiece remotely prompts the stimulator
circuitry to continuously vary a stimulation energy
level delivered to the stimulus probe while the
switch is maintained in said one of the plurality of
positions such that at least two different stimulation
energy levels between 0.0 and 30.0 milliamperes
are delivered.
THE REJECTIONS
I. Claims 1, 2, 5-11, 13, 36, and 37 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Gharib (US 2005/0075578 Al, published Apr.
7, 2005), Biscup (US 2004/0034340 Al, published Feb. 19, 2004), Morgan
(US 2001/0049524 Al, published Dec. 6, 2001), and Katims (US 5,806,522,
issued Sept. 15, 1998).
II. Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gharib, Biscup, Morgan, Katims, and West (US 6,618,626
B2, issued Sept. 9, 2003).
III. Claim 12 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Gharib, Biscup, Morgan, Katims, and Yamazaki (US 2002/0193779
Al, published Dec. 19, 2002).
IV. Claim 16 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Gharib, Biscup, Morgan, Katims, and Monroe (US 5,347,989, issued
Sept. 20, 1994).
V. Claims 17 and 21 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Gharib, Biscup, Morgan, Katims, and Moriyasu (US
5,857,986, issued Jan. 12, 1999).
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Application 10/901,933
VI. Claim 18 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Gharib, Biscup, Morgan, Katims, and Cory (US 2002/0065481 Al,
published May 30, 2002).
VII. Claim 19 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Gharib, Biscup, Morgan, Katims, and Wilson (US 5,540,235, issued
July 30, 1996).
VIII. Claim 20 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Gharib, Biscup, Morgan, Katims, and Rovegno (US 2004/0204628 Al,
published Oct. 14, 2004).
IX. Claims 22 and 27 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Gharib, Morgan, Katims, and Rovegno.
X. Claims 23-25 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over Gharib, Morgan, Katims, Rovegno, and Monroe.
XI. Claim 26 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Gharib, Morgan, Katims, Rovegno, and Moriyasu.
ANALYSIS
Rejection I - Obviousness over Gharib, Biscup, Morgan, and Katims
With respect to claim 1, the Examiner finds that Gharib discloses an
evoked potential monitoring system (surgical system 20) comprising the
various components as claimed, namely, a control unit ( control unit 22 and
patient module 24), cabling (accessory cable 32 and cable 55), a probe
assembly (pedicle testing assembly 36), a stimulus probe (pedicle probe 56),
a stimulator handpiece (handle assembly 54), a handle, and a switch (buttons
on handle assembly 54). Non-Final Act. 3--4 (citing Gharib ,r,r 60-63, 66,
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Application 10/901,933
77-80, Figs. 2, 3). 1 The Examiner acknowledges that Gharib as modified by
Biscup and Morgan
fails to explicitly teach a system wherein the system is adapted
such that movement of the switch to one of the plurality of
positions relative to the handpiece remotely prompts the
stimulator circuitry to continuously vary a stimulation energy
level delivered to the stimulus probe while the switch is
maintained in said one of the plurality of positions such that at
least two different stimulation energy levels ... are delivered.
Id. at 6. The Examiner relies on Katims for disclosing
[a] system [that] is adapted such that movement of the switch
(21, 22) to one of the plurality of positions (i.e. pressed or
released) relative to the handpiece remotely prompts the
stimulator circuitry to continuously vary a stimulation energy
level delivered to the stimulus probe 9 while the switch (21, 22)
is maintained in said one of the plurality of positions such that at
least two different energy levels are delivered.
Id. at 6-7 (emphasis added) (citing Katims Abstract, 15:7-15, 65----67; 16:1-
26, Figs. 1, 2). The Examiner concludes that it would have been obvious to
further modify the evoked potential monitoring system of Gharib so that
the system is adapted such that movement of the switch to one of
the plurality of positions relative to the handpiece remotely
prompts the stimulator circuitry to continuously vary a
stimulation energy level delivered to the stimulus probe while the
switch is maintained in said one of the plurality of positions such
that at least two different stimulation energy levels . . . are
delivered ... [ as taught by Katims] for improvement to achieve
a predictable result such as rapidly switching between different
intensities, which is often clinically desirable, so as to sweep
from current amplitudes of any suitable range until a significant
EMG response is obtained.
Non-Final Act. 7.
1 Non-Final Office Action ("Non-Final Act."), dated Sept. 20, 2017.
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Application 10/901,933
Appellants contend that: (1) "Katims relates to an automated current
perception threshold (CPT) determination device including a CPT control
device 9 operated by a user (e.g,, a technician or a patient) and electrodes,
cables, connectors 19 connectable to a patient," in which "the electrodes can
be placed on the skin of the patient (i.e., cutaneous body site) at one of
electrode placement body test sites" and thus, "Katims is clearly not
configured for use by a surgeon to apply the desired stimulus level to
anatomical features during intraoperative evoked potential monitoring
events, as is the pending system"; (2) "CPT device 9 is clearly not a
stimulator handpiece selectively maintaining a stimulus probe, the stimulator
handpiece including a switch," but rather, "CPT control device 9 is a table
top device that includes a display 100 and a variety of controls, including
switches 21, 22 for stimulus control and CPT determination"; and (3)
Katims does not disclose that movement of the switches 21, 22
relative to the CPT device 9 remotely prompts stimulator
circuitry to continuously vary a stimulation energy level
delivered to the stimulus probe while the switch is maintained in
said one of the plurality of positions such that at least two
different stimulation energy levels [are delivered].
Appeal Br. 11-12 ( emphasis omitted). 2
Appellants have the better position here. As an initial matter,
although the Examiner finds that Gharib already discloses a stimulator
handpiece 54 and a stimulus probe 56, the Examiner also relies on Katims
for disclosing a handpiece, a probe, and remotely prompting a stimulator
circuitry relative to the handpiece or the probe. See Non-Final Act. 6-7;
Ans. 7. Thus, it is not clear which reference the Examiner relies on as
2 Appeal Brief("Appeal. Br."), filed Feb. 15, 2018.
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disclosing these claimed limitations. As such, the Examiner does not
sufficiently articulate the rejection in an informative manner to provide
notice to Appellants. "[ A ]11 that is required of the office to meet its prima
facie burden of production is to set forth the statutory basis of the rejection
and the reference or references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement of [35 U.S.C.]
§ 132." In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011).
In this case, we agree with Appellants that it is unreasonable to equate
Katims' CPT control device 9 to a handpiece or a probe. See Reply Br. 2-3;
Non-Final Act. 6-7; Ans. 5. 3' 4 The Examiner's construing of a handpiece as
any object that can be contacted and/or manipulated by hand is beyond the
bounds of broadest reasonable interpretation. See Ans. 5. Further, a "probe"
is defined as a "blunt-ended surgical instrument used for exploring a wound
or part of a body." 5 In addition, the Specification describes that "the
stimulus probe 72 can be any one of a variety of tissue, bone, and/or nerve
stimulator probes." See Spec. 10: 17-19, Fig. 1. At best, Katims' CPT
control device 9 corresponds to console 30 of the subject invention rather
than stimulus probe 72.
Within the same vein of argument provided by Appellants, we fail to
see how Katims' CPT control device 9 remotely prompts stimulator circuitry
as the Examiner asserts. See Non-Final Act. 6-7; Appeal Br. 12. Katims'
CPT control device 9 delivers energy to a person not to a probe, as claimed.
3 Reply Brief ("Reply Br."), filed May 11, 2018.
4 Examiner's Answer ("Ans."), dated Mar. 13, 2018.
5 https://en.oxforddictionaries.com/definition/probe (last accessed Jan. 10,
2019).
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Application 10/901,933
See Katims, Fig. 1; see also Reply Br. 3, 6-8; Appeal Br. 26, Claims App.
("wherein the system is adapted such that movement of the switch to one of
the plurality of positions relative to the handpiece remotely prompts the
stimulator circuitry to continuously vary a stimulation energy level delivered
to the stimulus probe") ( emphasis added). Thus, the Examiner fails to
establish by a preponderance of the evidence that the combined teachings of
Gharib, Biscup, Morgan, and Katims disclose the monitoring system of
claim 1.
For these reasons, we do not sustain the rejection of claim 1 and
claims 2, 5-11, 13, 36, and 37 depending therefrom.
Rejection II- VIII Obviousness over Gharib, Biscup, Morgan, Katims, and
any of West, Yamazaki, Monroe, Moriyasu, Cory, Wilson, or Rovegno
Claims 3, 4, 12, and 16-21 depend from claim 1. Appeal Br. 26-29,
Claims App. The Examiner's rejections of these claims over the variously
indicated combinations of cited art are each based on the same unsupported
findings in the combination of Gharib, Biscup, Morgan, and Katims
discussed above. See Non-Final Act. 15-21. The Examiner does not rely on
West, Yamazaki, Monroe, Moriyasu, Cory, Wilson, or Rovegno to remedy
the deficiencies of the combination of Gharib, Biscup, Morgan, and Katims.
Accordingly, for reasons similar to those discussed above for Rejection I, we
do not sustain the rejections of claims 3, 4, 12, and 16-21 over the variously
indicated combinations of cited art.
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Rejection IX - Obviousness over Gharib, Morgan, Katims, and Rovegno
Independent claim 22 is directed to "[a] stimulator handpiece for use
with an evoked potential monitoring system" and recites "movement of the
switch to one of the plurality of positions remotely varies an electrical signal
deliverable to the stimulus probe while the switch is maintained in said one
of the plurality of positions such that at least two different stimulation
energy levels are deliverable to the stimulus probe." Appeal Br. 29, Claims
App. ( emphasis added).
With respect to claim 22, the Examiner finds that Gharib as modified
by Morgan discloses a stimulator handpiece for use with an evoked potential
monitoring system and relies on Katims for disclosing
a system wherein movement of the switch (21, 22) to one of a
plurality of positions remotely varies an electrical signal
deliverable to the stimulus probe 9 while the switch (21, 22) is
maintained in said one of the plurality of positions such that at
least two different stimulation energy levels are deliverable to the
stimulus probe 9.
Non-Final Act. 21-23 (emphasis added). 6 As discussed above for Rejection
I, we do not agree with the Examiner that Katims' CPT control device 9
equates to a probe, as claimed. Further, we fail to see how movement of
Katims' switch (21, 22) to one of a plurality of positions remotely varies an
electrical signal deliverable to the stimulus probe 9. See id.; see also Appeal
Br. 22. As discussed above, Katims' CPT control device 9 delivers energy
to a person not to a probe, as claimed. See Katims, Fig. 1; see also Reply
Br. 3, 6-8; Appeal Br. 29, Claims App. ("wherein movement of the switch
6 The Examiner relies on the teachings of Rovegno for limitations other than
those discussed above. See Non-Final Act. 21-25.
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to one of the plurality of positions remotely varies an electrical signal
deliverable to the stimulus probe") ( emphasis added). Thus, the Examiner
fails to establish by a preponderance of the evidence that the combined
teachings of Gharib, Morgan, Katims, and Rovegno disclose the handpiece
of claim 22.
For these reasons, we do not sustain the rejection of claim 22 and
claim 27 depending therefrom.
Rejection X - XI Obviousness over Gharib, Morgan, Katims, Rovegno, and
either Monroe or Moriyasu
Claims 23-26 depend from claim 22. Appeal Br. 29, Claims App.
The Examiner's rejections of these claims over the variously indicated
combinations of cited art are each based on the same unsupported findings in
the combination of Gharib, Morgan, Katims, and Rovegno discussed above.
See Non-Final Act. 25-27. The Examiner does not rely on Monroe or
Moriyasu to remedy the deficiencies of the combination of Gharib, Morgan,
Katims, and Rovegno. Accordingly, for reasons similar to those discussed
above for Rejection IX, we do not sustain the rejections of claims 23-26
over the variously indicated combinations of cited art.
DECISION
We REVERSE the decision of the Examiner to reject claims 1-13,
16-27, 36, and 37 under 35 U.S.C. § 103(a).
REVERSED
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