Ex Parte Whitehurst et alDownload PDFPatent Trial and Appeal BoardFeb 26, 201613546873 (P.T.A.B. Feb. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/546,873 07 /11/2012 50638 7590 02/26/2016 Boston Scientific Neuromodulation Corp. c/o Lowe Graham Jones 701 Fifth Avenue Suite 4800 Seattle, WA 98104 FIRST NAMED INVENTOR Todd K. Whitehurst 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. BSNC-1-426.1 9605 EXAMINER DIETRICH, JOSEPH M ART UNIT PAPER NUMBER 3762 MAILDATE DELIVERY MODE 02/26/2016 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 TODD K. WHITEHURST, RAFAEL CARBUNARU, KERRY BRADLEY, JAMES P. MCGIVERN, MATTHEW I. HALLER, TOM XIAOHAI HE, and JANUSZ A. KUZMA Appeal2014-002357 Application 13/546,873 Technology Center 3700 Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and THOMAS F. SMEGAL, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Todd K. Whitehurst et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject under 35 U.S.C. § 103(a) claims 39--45 as unpatentable over Schulman (US 6, 185,452 B 1; iss. Feb. 6, 2001) and Hill (US 6,266,564 B 1; iss. July 24, 2001 ). 1 Claims 1-38 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 The Examiner does not include claims 44 and 45 in the heading of this ground of rejection. Final Act. 3 (mailed Apr. 25, 2013). However, these claims are included in the body of the rejection. See id. at 4. We consider this an inadvertent and harmless error by the Examiner. Appeal2014-002357 Application 13/546,873 CLAIMED SUBJECT MATTER The claimed subject matter "relates to implantable microstimulator systems with programmable multielectrode configuration and uses therefor." Spec. para. 1; Fig. IA. Claim 39, the sole independent claim, is representative of the claimed subject matter and recites: 39. A method of electronically positioning a microstimulator implanted within a patient, the microstimulator having an elongate casing, a power source contained in the elongated casing, and programmably configurable electrodes disposed on an exterior surface of the elongated casing, at least some of the electrodes being partitioned into separately activated electrodes located at different positions along an arc extending along an outer extent of the elongate casing, the method comprising: directing electrical stimulation from a subset of the programmably configurable electrodes into a volume of tissue; allowing the microstimulator to rotate within the patient about a long axis of the microstimulator; reprogramming the programmably configured electrodes to select a different subset of the programmably configurable electrodes to compensate for the rotation of the microstimulator within the patient; and directing electrical stimulation from the different subset of the programmably configured electrodes into the volume of tissue. ANALYSIS Independent claim 39 calls for a method of electronically positioning a microstimulator implanted within a patient including the step of "reprogramming the programmably configured electrodes to select a different subset of the programmably configurable electrodes to compensate for the rotation of the microstimulator within the patient." Appeal Br. 9, Claims App. The Examiner relies on Hill for disclosure of the above cited 2 Appeal2014-002357 Application 13/546,873 step. See Ans. 2-3; see also Final Act. 3. According to the Examiner, [ w ]hile Hill [teaches that] rotation of the device may take place in one embodiment, Hill also teaches that "[a]ltematively, current may be applied to different pairs of electrodes" in column 8, lines 50- 51. Therefore, the electrodes may be reprogrammed to select a different subset of the programmably configurable electrodes. Figures 14 and 15 [of Hill] also show current density distribution between two different subsets of electrodes (i.e. electrodes positioned both circumferentially and axially along the device). Therefore, different subsets of electrodes can be selected to compensate for the rotation of a microstimulator within the patient. Id. The Examiner further finds: [b ]oth the micro stimulator taught by Schulman and the catheter taught by [Hill] are "allowed to rotate within the patient about a long axis of the [device]" because they are implanted in the patient and not securely anchored . . . . Furthermore, because the devices [of Schulman and Hill] are allowed to rotate, selecting different subsets of electrodes as taught by Hill in order to stimulate target tissue would then be done to "compensate for the rotation of the micro stimulator within the patient." Id. at 3. Appellants contend that "[i]nstead of reprogramming the electrodes to displace the stimulation field conveyed by the catheter, Hill discloses ... the catheter is rotated about its longitudinal axis to displace the stimulation field." Appeal Br. 4; see also Hill, col. 8, 11. 30-42; Final Act. 3. Appellants further contend that Figures 13-15 of Hill, as cited by the Examiner, do not disclose the reprogramming step. See id. Specifically Appellants contend that "Hill discloses that the circumferential current density can be varied by selectively using a four-electrode arrangement (Fig. 13) or a three-electrode arrangement (Fig. 14), or that an axial current distribution may be achieved 3 Appeal2014-002357 Application 13/546,873 using a longitudinal electrode arrangement (Fig. 15)." Appeal Br. 4-5 (citing Hill, col. 7, 11. 43---60; Figs. 13-15). Appellants conclude that "[t]he most that Hill suggests with respect to Schulman, is that different numbers of electrodes can be circumferentially disposed about a microstimulator to vary the circumferential current density or that the microstimulator can be rotated to adjust the electrical field with respect to tissue targeted for stimulation." Id. at 5. At the outset, we note Appellants' assertion that the claimed step "allowing the microstimulator to rotate" "implies that that the microstimulator does, in fact, rotate" and that "the claim language 'to compensate for the rotation of the micro stimulator within the patient' necessarily requires the microstimulator to have rotated." Appeal Br. 4--5; see also id. at 7 ("The significance is that the microstimulator rotates, and is then compensated for by reprogramming the electrodes. Again, there is no other conclusion that one can come to when reading the claim language other than the fact that the microstimulator, in fact, rotates"). We further note the Examiner's position that "' [a ]llowing the microstimulator to rotate' is not a positive recitation that the microstimulator does in fact rotate ... If the microstimulator barely rotates, the stimulation would not need to be greatly adjusted." Final Act. 2. In other words, based on the Examiner's interpretation, the microstimulator rotates. As such, we understand the claim requires rotation and we agree with Appellants that "even if micro stimulator barely rotates, such that the stimulation need not be greatly adjusted, there is still an adjustment that must take place." Appeal Br. 6 (emphasis added); see also Final Act. 2. 4 Appeal2014-002357 Application 13/546,873 In this case, both the Examiner and Appellants acknowledge that the microstimulator of Schulman and the catheter of Hill are "allow[ ed] ... to rotate within the patient." See Ans. 3; Reply Br. 3. We agree with Appellants that Figures 13-15 of Hill, as cited by the Examiner, fail to disclose the reprogramming step of claim 39. Appeal Br. 4--5; see also Final Act. 3; Hill, col. 7, 11. 43-60, Figs. 13-15. We acknowledge the Examiner's position that rotation of Hill's catheter allows for different subsets of electrodes to be selected in order to stimulate different target tissue( s ). See Ans. 2-3; see also Hill, col. 2, 11. 12-20; col. 2, 1. 66- col. 3, 1. 2; col. 8, 11. 50-51; Appeal Br. 5. However, the Examiner fails to provide sufficient evidence or technical reasoning regarding how selecting different subsets of electrodes in order to stimulate different target tissue( s) relates to reprogramming the electrodes to compensate for the rotation of the microstimulator. See Ans. 2-3; see also Appeal Br. 5---6, 8; Reply Br. 2. Further, the Examiner fails to provide sufficient evidence or technical reasoning to support a determination that "the Hill device, in its normal usual operation, ... necessarily perform[ s] the step of reprogramming the electrodes to compensate for the rotation of the microstimulator." See id.; see also Reply Br. 3; Appeal Br. 6-7. Based on the foregoing reasons, the Examiner fails to establish by a preponderance of the evidence that the combined teachings of Schulman and Hill render obvious the method called for in claim 39. Accordingly, we do not sustain the Examiner's rejection of claim 39 and its dependent claims 40-45 as unpatentable over Schulman and Hill. 5 Appeal2014-002357 Application 13/546,873 DECISION We REVERSE the decision of the Examiner to reject claims 39--45. REVERSED 6 Copy with citationCopy as parenthetical citation