Ex Parte Terry et al

Patent Trial and Appeal Board

Mar 18, 2013

11118451 (P.T.A.B. Mar. 18, 2013)

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.
11/118,451 04/29/2005 INV001Reese S. Terry JR. 1000.066 7996
41332 7590 03/19/2013
CYBERONICS, INC.
LEGAL DEPARTMENT, 6TH FLOOR
100 CYBERONICS BOULEVARD
HOUSTON, TX 77058
EXAMINER
MORALES, JON ERIC C
ART UNIT PAPER NUMBER
3766
MAIL DATE DELIVERY MODE
03/19/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte REESE S. TERRY, JR. and JACOB ZABARA
____________________

Appeal 2011-000389
Application 11/118,451
Technology Center 3700
____________________

Before: WILLIAM V. SAINDON, NEIL T. POWELL, and JILL D. HILL,
Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-000389
Application 11/118,451
2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-11 and 13-36 under § 102(e) as anticipated by or,
in the alternative, under § 103(a) as obvious over DiLorenzo (US 7,209,787
B2, iss. Apr. 24, 2007). We have jurisdiction under 35 U.S.C. § 6(b).

The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A method of treating a patient having a substance
addiction, comprising:
directly contacting an electrode to a cranial nerve of the
patient, and
applying an electrical signal to said cranial nerve using
said electrode to alleviate a symptom of the substance
addiction,
wherein the substance addiction is selected from the
group consisting of cocaine addiction, alcoholism, addiction to
opioids, sedative, hypnotic or anxiolytic-related disorders,
hallucinogen related disorders, cannabis related disorders,
amphetamine related disorders, nicotine related disorders,
inhalant related disorders, phencyclidine related disorders, and
polysubstance abuse disorders.

SUMMARY OF DECISION
We AFFIRM.

Appeal 2011-000389
Application 11/118,451
3
OPINION
Anticipation by DiLorenzo
Appellants argue the claims subject to the anticipation rejection as a
group. We select claim 1 as representative, with claims 2-11 and 13-36
standing or falling therewith.
With respect to claim 1, the Examiner found that DiLorenzo discloses
directly contacting an electrode to the vagus nerve and applying an electrical
signal thereto. Ans. 3 (citing DiLorenzo, col. 57, ll. 10-30 “delivering
electrical stimulation to a vagus nerve … coupling at least one electrode to
the vagus nerve…”).
Appellants admit DiLorenzo discloses alleviating a symptom of
substance abuse, but argue DiLorenzo does not disclose stimulation to a
cranial nerve. Reply Br. 3. This argument is unsound because the vagus
nerve is one of the cranial nerves. Claim 1 merely requires that the electrode
is connected to a cranial nerve and does not set forth any particular location
requirements.
Appellants next argue that DiLorenzo “is inoperable or would fail to
achieve its intended result.” Reply Br. 4. To support this conclusion,
Appellants argue that DiLorenzo fails to specify what neural pathways could
be stimulated to alleviate a symptom of substance abuse or what connections
exist between a cranial nerve and a neural pathway stimulatable to alleviate
a symptom of substance abuse. Id. None of these arguments are persuasive.
First, none of these things Appellants argue are in the claim, and even
if they were, there is no requirement that a reference’s authors recognize all
of the features of their invention. In re Cruciferous Sprout Litig., 301 F.3d
1343, 1349 (Fed. Cir. 2002).
Appeal 2011-000389
Application 11/118,451
4
Second, the claim limitation stating that the stimulation is “to alleviate
a symptom of the substance addiction” is merely stating the result of
following the method. As the Examiner correctly pointed out (Ans. 3),
disclosure of a method demonstrates disclosure of its result. Bristol-Myers
Squibb Co. v. Ben Venue Labs., Inc. 246 F.3d 1368, 1376-77 (Fed. Cir.
2001) (citing In re May, 574 F.2d 1082, 1090 (CCPA 1978); Verdegaal
Bros., Inc. v. Union Oil Co., 814 F.2d 628, 633 (Fed. Cir. 1987);
MEHL/Biophile Int'l Corp. v. Milgraum, 192 F.3d 1362, 1366 (Fed. Cir.
1999)). The Examiner has clearly shown that DiLorenzo discloses direct
electrical stimulation of the vagus nerve. If the claimed actions did not
result in the claimed result, then Appellants’ claims would fail 35 U.S.C. §
112, first paragraph. See also In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir.
1994)
[The] observation that appellant did not provide the type of
detail in his specification that he now argues is necessary in
prior art references supports the… finding that one skilled in
the art would have known how to implement the features of the
references and would have concluded that the reference
disclosures would have been enabling.
In addition to the above, we note that Appellants have the burden to show
lack of enablement in a prior art reference.1 In re Sasse, 629 F.2d 675, 681
(CCPA 1980) (while 35 U.S.C. § 102(b) requires a reference to be enabled,
it is applicant’s burden to demonstrate non-enablement). Given the
unpersuasiveness of the arguments made, Appellants have clearly not met
that burden.

1 Appellants’ argument that the prior art is “inoperable” and would “fail to
achieve its intended result” is essentially an argument that the reference is
not enabled because it challenges whether one of ordinary skill in the art
could use the invention disclosed.
Appeal 2011-000389
Application 11/118,451
5
Having reviewed Appellants’ Briefs, we are not apprised of error in
the Examiner’s rejection of claim 1 as anticipated by DiLorenzo. Claims 2-
11 and 13-36 fall therewith.

Obviousness in view of DiLorenzo
Appellants do not separately argue claims 1-4, 8, 13-17, 22, 23, 27-29,
32, 35, and 36. We select claim 1 as representative, with claims 2-4, 8, 13-
17, 22, 23, 27-29, 35, and 36 standing or falling therewith. Appellants
separately argue the following claims:
o claims 5, 9, 24, and 30. Reply Br. 8-9. We select claim 5 as
representative, with claims 6, 9, 10, 24, 25, and 30 standing or falling
therewith.
o claims 7, 11, 21, and 26. Reply Br. 9-10. We select claim 7 as
representative, with claims 11, 21, and 26 standing or falling
therewith.
o claims 18-20. Reply Br. 10-11. We select claim 18 as representative,
with claims 19 and 20 standing or falling therewith.
o claims 31, 33, and 34. Reply Br. 11. We select claim 31 as
representative, with claims 33 and 34 standing or falling therewith.
o claim 32. Reply Br. 11.
Appellants’ arguments with respect to claim 1 are similar to those
raised with respect to the anticipation rejection of claim 1 and are likewise
unpersuasive. App. Br. 8-10; Reply Br. 5-8. Appellants’ additional
argument directed toward expectation of success is misplaced. Reply Br. 5-
6. “Expectation of success” is considered when there is a modification
and/or combination of the references, and the “success” is whether this
Appeal 2011-000389
Application 11/118,451
6
modification and/or combination would be successful. Here, the method is
anticipated (i.e., there is no modification), such that there is clearly success.
Having reviewed Appellants’ Briefs, we are not apprised of error in
the Examiner’s obviousness rejection of claim 1. Claims 2-42, 8, 13-17, 22,
23, 27-29, 35, and 36 fall therewith.
With respect to claim 5, Appellants’ arguments are again directed to
the location of the stimulation event. Reply Br. 8-9. However, no particular
locations on the vagus nerve are claimed. The Examiner properly found that
DiLorenzo describes directly stimulating the vagus nerve. See Ans. 3 (citing
DiLorenzo, col. 57, ll. 10-30). That the programmable electric pulse
generator may be shown in a particular embodiment as connected to
something else does not vitiate this disclosure. Accordingly, Appellants’
arguments do not apprise us of error in the rejection of claim 5. Claims 6, 9,
10, 24, 25, and 30 fall therewith.
Claim 7 further recites the result of the method of claim 1. As we
stated above, disclosure of the process is disclosure of the result of that
process. Accordingly, Appellants’ arguments do not apprise us of error in
the obviousness rejection of claim 7. Claims 11, 21, and 26 fall therewith.
Claim 31 states that the electrode is connected to the vagus nerve in
the patient’s neck area. The Examiner found that figure 1 of DiLorenzo
discloses an electrode directly contacting the vagus nerve in the neck. Ans.
5. Appellants argue that the only element of figure 1 in contact with the
vagus nerve is electrode array 54. Reply Br. 11. However, as discussed in
DiLorenzo (and cited by the Examiner, Ans. 3), the nerve electrode array 98
interfaces with the vagus nerve using the “stimulating and recording circuit”

2 In the event of further prosecution, we note that claim 4 is dependent upon
itself and appropriate correction is required.
Appeal 2011-000389
Application 11/118,451
7
26. DiLorenzo, col. 11, ll. 20-23. As such, DiLorenzo appears to stimulate
the vagus nerve using this particular array, which is depicted as in the neck
in figure 1. Appellants do not discuss this disclosure or cogently explain to
the contrary. Accordingly, Appellants’ argument does not apprise us of
error in the obviousness rejection of claim 31. Claims 33 and 34 fall
therewith.
With respect to claim 32, Appellants argue that the Examiner’s basis
for obviousness is insufficient because “any motivation to combine or
modify the prior art must be based upon a suggestion in the prior art.” Reply
Br. 11. Appellants’ argument is contrary to established law. KSR Int’l Co.
v. Teleflex, Inc., 550 U.S. 398, 419 (2007) (“The obviousness analysis
cannot be confined by a formalistic conception of the words teaching,
suggestion, and motivation, or by overemphasis on the importance of
published articles and the explicit content of issued patents.”). Accordingly,
Appellants’ argument does not apprise us of error in the obviousness
rejection of claim 32.

DECISION
We AFFIRM the Examiner’s decision regarding claims 1-11 and 13-
36.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

hh