Ex Parte Yoo et al

Patent Trial and Appeal Board

Sep 19, 2016

13244415 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/244,415 09/24/2011 PeterJ. Yoo
42074 7590 09/21/2016
Faegre Baker Daniels LLP
PATENT DOCKETING - INTELLECTUAL PROPERTY (32469)
2200 WELLS FARGO CENTER
90 SOUTH SEVENTH STREET
MINNEAPOLIS, MN 55402-3901
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.
432469 001212 8293
EXAMINER
BERTRAM, ERIC D
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
09/21/2016 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):
PatentDocketing@FaegreBD.com
e-OfficeActionBSC@FaegreBD.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER J. YOO, MICHAEL A. MOFFITT, and
KERRY BRADLEY
Appeal2014-004590
Application 13/244,415 1
Technology Center 3700
Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and
BRANDON J. WARNER, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Peter J. Yoo et al. (Appellants) appeal under 35 U.S.C. § 134(a) from
the Examiner's final decision rejecting under 35 U.S.C. § 102(b) claims 1-
20 as anticipated by Stone (US 2007/0203543 Al, pub. Aug. 30, 2007). We
have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
According to Appellants, the real party in interest is Boston Scientific
Neuromodulation Corporation. Appeal Br. 2 (filed Nov. 19, 2013).
Appeal2014-004590
Application 13/244,415
SUMMARY OF DECISION
We AFFIRM-IN-PART and enter a NEW GROUND of REJECTION
pursuant to our authority under 37 C.F.R. 41.50(b).
INVENTION
Appellants' invention relates to "neurostinmlation systems and
method[s] of s[t]imulating the region of tissue activation." Spec. i-f 2.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A system for an electrical tissue stimulator coupled to an
array of electrodes, comprising:
a user-controlled input device configured for generating
control signals; and
at least one processor configured for generating a
plurality of stimulation parameter sets in response to the control
signals that, when applied to the electrodes, will shift electrical
current bet\'l/een the electrodes to modify a region of tissue
activation, the at least one processor further configured for
computing an estimate of the region of tissue activation, and for
generating display signals capable of prompting a monitor to
display an animated graphical representation of the computed
estimate of the region of tissue activation.
ANALYSIS
Claims 1-7, 11-16, and 20
Appellants have not presented arguments for the patentability of
claims 2-7, 11-16, and 20 separately from claim 1. See Appeal Br. 4---6.
Therefore, in accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select claim 1
as the representative claim to decide the appeal of the rejection of these
claims, with claims 2-7, 11-16, and 20 standing or falling with claim 1.
2
Appeal2014-004590
Application 13/244,415
Appellants argue that, in contrast to the claimed invention, which
requires "computing an estimate of the region of tissue activation" as per
claim 1 (see id. at 9), Stone discloses "that a stimulation field is defined by
the user." See id. at 4. According to Appellants, "Stone does not compute
the region of activation, since it is defined by the user." Id.
We are not persuaded by Appellants' arguments because in Figures
58---61 of Stone, to which the Examiner cites in the rejection, Stone discloses
activation fields 986, 988, and 990 created by programmer 966. See Stone
i-f 296, Fig. 58; see also Final Act. 3 (mailed July 22, 2013). More
specifically, Stone discloses using slider 982 of user interface 964 to
increase or decrease amplitude 980 of stimulation parameters in order to
view how the amplitude change would affect the size, shape, and location of
activation fields 986, 988, and 990. See Stone i-fi-1294, 296, Figs. 60, 61.
Therefore, as Stone's programmer 966, i.e., processor, changes the size,
shape, and location of activation fields 986, 988, and 990 in response to a
user changing the amplitude 980 of stimulation parameters, Stone's
programmer 966 is "configured for computing an estimate of the region of
tissue activation," as called for by claim 1.
Appellants further argue that Stone fails to disclose the limitation
"generating display signals capable of prompting a monitor to display an
animated graphical representation of the computed estimate of the region of
tissue activation." Appeal Br. 5---6 (emphasis added); see also Reply Br. 1-
2. According to Appellants, the Specification defines the term "'animate'
... as the 'user perceives a movement or change ... in a continuous or near-
continuous (flickering) manner."' Appeal Br. 5; see also Spec. i-f 77. Thus,
3
Appeal2014-004590
Application 13/244,415
Appellants assert that just because Stone discloses a manipulated
stimulation, this does not mean that the movement is "animated," as defined
by Appellants' Specification, and thus, the Examiner's position is based on
conjecture. See Appeal Br. 5, Reply Br. 1.
In response, the Examiner takes the position that because "the display
will update whenever the user changes the input, the estimated region of
activation is displayed such that any changes are perceived by the user
continuously." Ans. 4 (mailed Feb. 3, 2014).
We agree with the Examiner's position because an artisan must be
presumed to know something about the art apart from what the references
explicitly disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). In
this case, Stone discloses that when moving slider 982 to increase or
decrease the amplitude of stimulation parameters, the size, shape, and
location of activation fields 986, 988, and 990 change according to the
motion of slider 982. See Stone i-fi-1296, 299, Figs. 58, 60, 61. Therefore, a
person of ordinary skill in the art would have readily recognized that the
continuous motion of Stone's slider 982 would likewise result in at least a
near-continuous, i.e., animated, update in the display of the size, shape, and
location of activation fields 986, 988, and 990. This is sufficient to establish
that Stone discloses an "animated graphical representation," as called for by
claim 1, so as to shift the burden to Appellants to show otherwise. See In re
King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). Appellants have not come forth
with any persuasive evidence or technical reasoning to satisfy such burden.
4
Appeal2014-004590
Application 13/244,415
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 102(b) of claim 1, and claims 2-7, 11-16, and 20 falling
with claim 1, as anticipated by Stone.
Claims 8-10
Dependent claims 8-10 respectively require that the "animated
graphical representation" of claim 1 changes its "shade," "transparency,"
and "color." See Appeal Br. 10 (Claims App.).
The Examiner finds that Stone's
[F]igures 9, 10, 19-21, 23-30, 53-56, 58-60, 63-65, 67-69, 71, 72,
74 and 75 do show various shades of gray, and the features of the
brain can be viewed through the estimated regions of tissue
activation, thus they are transparent. Stone further discloses the
use of varying shades, colors and transparency in paragraphs
0163, 0212, 0215, 0228, 0230, 0284 and 0302.
Ans. 4--5.
Although we appreciate that the figures and citations from Stone that
the Examiner relies upon disclose variations in shade, transparency, and
color, nonetheless, we agree with Appellants that, "[t]he various shades of
gray in the figures cited by the Examiner respectively represent different
tissue regions of the brain." Reply Br. 2. For example, Stone's paragraph
163 relates to "varying densities of tissue within brain 18"; paragraphs 212,
215, 228, and 23 0 discuss anatomical regions of the same density; paragraph
284 relates to a selected anatomical structure in a list menu; and paragraph
302 relates to a graphically displayed brain model.
In contrast, claims 8-10 require that the changes in shade,
transparency, and color be that of an "animated graphical representation of
5
Appeal2014-004590
Application 13/244,415
the computed estimate of the region of tissue activation." See Appeal Br. 10
(Claims App.). Although Stone discloses that the size, shape, and location
of activation fields 986, 988, and 990 change, the Examiner's citations to
Stone do not disclose that the shade, transparency, and color of activation
fields 986, 988, and 990 also change. We thus agree with Appellants that,
"the stimulation fields are not displayed with different shades of grey or
different transparencies." Appeal Br. 7.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claims 8-10 as anticipated by Stone.
Claims 17-19
Appellants argue that, in contrast to claims 17 and 18, which require
that the region of activation tissue be computed from stimulation parameter
sets, Stone discloses the opposite, namely, that a stimulation template is
derived from a user-defined stimulation field. See Appeal Br. 7-8.
In response, the Examiner takes the position that "paragraphs 0109,
0194 and 0195 of Stone clearly recite that the user selects electrode
configurations, stimulation sets are computed in response to this selection,
and then estimates of the tissue activation based on the selected stimulation
sets are then displayed." Ans. 5.
Appellants respond that,
Paragraph [O 109] discloses displaying electrodes selected by the
user. Paragraph [0194] discloses the exact opposite of what the
Examiner concludes (i.e., "Programmer 19 uses the information
received via the user interface 90 to automatically generate
stimulation parameters according to the stimulation field defined
by the clinician" (as opposed to generating an estimate of the
6
Appeal2014-004590
Application 13/244,415
stimulation field in accordance with stimulation parameters
defined by the clinician). Paragraph [O 195] merely discloses
illustrations of different stimulation fields produced by different
combination of electrodes.
Reply Br. 3. Thus, according to Appellants, "[t]here is no disclosure [in
Stone] that the stimulation fields are computed from these stimulation
parameters." Appeal Br. 8.
Although we appreciate that in paragraphs 109, 194, and 195, Stone
discloses deriving stimulation templates from user-defined stimulation
fields, nonetheless, we note that with respect to the limitations of claim 17,
the Examiner cites to Figures 58---61 of Stone, whereas only for claims 18
and 19 does the Examiner cite to paragraphs 109, 194, and 195. See Final
Act. 3.
Accordingly, with respect to the rejection of claim 17, we are not
persuaded by Appellants' arguments because, as noted above, when moving
slider 982 to increase or decrease the amplitude of stimulation parameters,
the size, shape, and location of activation fields 986, 988, and 990 change
according to the motion of slider 982. See Stone i-fi-1296, 299, Figs. 58, 60,
61. Therefore, as activation fields 986, 988, and 990 (region of activation)
are derived, i.e., computed, from the increase or decrease of the amplitude of
stimulation parameters, Stone discloses that activation fields 986, 988, and
990 are computed from sets of stimulation parameters, including different
pulse amplitudes, as called for by claims 17 and 18. The Examiner is also
correct that Stone discloses that pulse amplitudes (as per claim 18), such as
voltage and current amplitudes, and electrode combinations (as per claim
19), constitute types of stimulation parameters. See Final Act. 3 (citing
Stone i-f 194).
7
Appeal2014-004590
Application 13/244,415
Hence, for the foregoing reasons, we sustain the rejection of claims
17-19 as anticipated by Stone.
NEW GROUND OF REJECTION
We make the following new ground of rejection pursuant to
37 C.F.R. § 41.50(b).
Claims 8-10 are rejected under 35 U.S.C. § 103 as being unpatentable
over Stone.
We adopt the Examiner's findings regarding the rejection of
independent claim 1, from which claims 8-10 depend. See Final Act. 3.
However, for the reasons set forth supra, Stone fails to disclose that the
"animated graphical representation" of claims 8-10 changes its "shade,"
"transparency," and "color," respectively.
Nonetheless, Stone discloses a display system using different colors,
shades, and transparencies for easy identification of anatomical features with
different tissue densities. See Stone i-fi-f 163, 284, 302. Therefore, as Stone's
system has the ability to display different colors, shades, and transparencies,
it would have been obvious for a person of ordinary skill in the art to modify
the system of Stone to also display changes in activation fields 986, 988, and
990 using different colors, shades, and transparencies. Such a modification
would have been made to provide a more robust display system by allowing
a user additional ways for comparing changes in the activation fields, while
also providing a user with a more pleasing viewing experience. Although
we appreciate that Stone's display system already shows changes in size,
shape, and location of activation fields 986, 988, and 990, nonetheless,
8
Appeal2014-004590
Application 13/244,415
modifying Stone's display system to also include different colors, shades,
and transparencies is an improvement, as it provides a viewer with
additional and/or alternative ways of viewing and comparing changes in the
activation fields.
SUMMARY
The Examiner's decision to reject claims 1-20 is affirmed as to claims
1-7 and 11-20 and reversed as to claims 8-10.
We enter a new ground of rejection of claims 8-10 under 35 U.S.C.
§ 103 as being unpatentable over Stone.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the Examiner, in which event the prosecution will be
remanded to the Examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
9
Appeal2014-004590
Application 13/244,415
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
10