Ex Parte Carbunaru et alDownload PDFPatent Trial and Appeal BoardJan 6, 201612952845 (P.T.A.B. Jan. 6, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/952,845 11/23/2010 45458 7590 01/08/2016 SCHWEGMAN LUNDBERG & WOESSNER/BSC POBOX2938 MINNEAPOLIS, MN 55402 Rafael Carbunaru 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. 6279.071US1 2445 EXAMINER LEVICKY, WILLIAM J ART UNIT PAPER NUMBER 3762 NOTIFICATION DATE DELIVERY MODE 01/08/2016 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): uspto@slwip.com SLW@blackhillsip.com PTOL-90A (Rev. 04/07) u-NITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAFAEL CARBUNARU, KRISTEN JAAX, and ANDREW DIGIORE Appeal2013-008561 Application 12/952,845 1 Technology Center 3700 Before CHARLES N. GREENHUT, LYNNE H. BROWNE, and JASON W. MELVIN, Administrative Patent Judges. MEL VIN, Administrative Patent Judge. DECISION ON APPEAL This appeal arises under 35 U.S.C. § 134(a), from a rejection of claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. 1 Appellants identify Boston Scientific Neuromodulation Corporation as the real party in interest. Appeal Br. 2. Appeal2013-008561 Application 12/952,845 BACKGROUND The claims are directed to a neurostimulation system and method for combining current using reconfigurable current sources. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A neurostimulation system, comprising: a plurality of electrical terminals configured for being coupled to a respective plurality of electrodes; a plurality of electrical sources; a switching network coupled between the electrical sources and the electrical terminals; and control circuitry configured for reconfiguring one of the electrical sources from a second polarity to a first polarity, causing the one electrical source to generate a first electrical current when configured in the first polarity, causing another one of the electrical sources to generate a second electrical current, causing the switching network to combine at least a portion of the first electrical current and at least a portion of the second electrical current in one of an additive manner and a subtractive manner to produce a first combined electrical current, and conveying the first combined electrical current to or from one of the electrodes. Appeal Br. 8 (Claims App.). EVIDENCE The Examiner relies on the following evidence: Meadows US 6,516,227 Bl Feb. 4, 2003 Gord WO 00/00251 Jan. 6, 2000 2 Appeal2013-008561 Application 12/952,845 REJECTIONS Appellants seek our review of the final rejection of claims 1-23 under 35 U.S.C. § 102(b) as anticipated by Meadows. DISCUSSION Claims 1, 2, 4--14, and 16-23 Appellants argue claims 1, 2, 4--14, and 16-23 as a group, thus those claims stand or fall together. Appeal Br. 4--6. We select claim 1 as representative. The Examiner finds that Meadows teaches all limitations of the claims on appeal. Final Act. 3-8. In response to Appellants' argument in a Response After Final Action that Meadows lacks a teaching of combining current from multiple current sources (see Adv. Act. 2), the Examiner points to Gord, which is incorporated by reference in Meadows (id.). See Ultradent Prods., Inc. v. Life-Like Cosmetics, Inc., 127 F.3d 1065, 1069 (Fed. Cir. 1997) (holding that material incorporated by reference into a document may be considered in an anticipation determination). The Examiner finds that "Meadows discloses the current sources as depicted in Figure 4A are realized as taught by" Gord. Id. (citing Meadows 20:23-32). Claim 1 requires a "control circuitry configured for reconfiguring one of the electrical sources from a second polarity to a first polarity." Appeal Br. 8 (Claims App.). Appellants argue that Gord lacks a teaching "that the polarities of the either of the first current source (I) or the second current source (2I) can be reconfigured from a positive polarity to a negative polarity." Id. at 6. Providing further detail in the Reply Brief, Appellants assert that the "current sources [in Gord] are fixed as positive current 3 Appeal2013-008561 Application 12/952,845 sources, and therefore, cannot be reconfigured as negative current sources." Reply Br. 4. In response to this argument the Examiner correctly finds that, in Gord, "Bits are used for determining which of the current sources are activated and combining the signals into an output for node 204." Ans. 6; Gord 8:32-9:1 ("[e]ach of the current sources 210, 212, 220 and 222 is controlled by a respective bit signal, applied to the current source via a control line, which is used to selectively control which current sources are enabled, and which are not."). Gord teaches applying a "biphasic pulse" such that current is sourced from one electrode to another, and then the polarities reversed such that current flows in the opposite direction. Id. at 3:30-4:18; see also Adv. Act. 2 (citing Gord 3:30-4:18). Thus, Appellants' argument is unconvincing. Appellants further argue that "Meadows does not specifically disclose that the current source nodes can be connected to the same electrode node via the switch matrix 188 in order to combine the electrical current in an additive manner or subtractive manner." Reply Br. 3. The rejection, however, relies on Gord-as incorporated into Meadows-for the connection of current sources to a common electrical point, so whether the remainder of Meadows specifically discloses this element is inapposite. See Adv. Act. 2 ("The international Application [Gord] discloses on page 3, line 30 to page 4 line 18 that the first current source (I) and the second current source (21) are enabled and combined (to form 31) to be sourced to the 5th electrode."). We therefore sustain the rejection of claims 1, 2, 4--14, and 16-23. 4 Appeal2013-008561 Application 12/952,845 Claims 3 and 15 Appellants argue claims 3 and 15 as a group, thus those claims stand or fall together. Appeal Br. 6-7. We select claim 3 as representative. Claim 3 depends from claim 1 and further requires "a switch associated with the one electrical source" and that the control circuitry be "configured for reconfiguring the one electrical source by operating the switch to switch the one electrical source between a positive terminal of an energy source and a negative terminal of the energy source." Id. at 8-9 (Claims App.). The Examiner finds that Meadows teaches the claimed switch and operation of the switch, in that "the control logic 166 in Figure 4A [of Meadows] ... controls the operation of the current sources 186 thereby switching between the positive terminal and the negative terminal for output of each node 187." Ans. 6; accord Final Act. 4--5. Appellants argue that "[t]here is no disclos[ure] in [Gord] that either of the current source (I) (as the claimed first current source) and the current source (21) (as the claimed second current source) is switched between a positive terminal of an energy source and a negative terminal of the energy source." Appeal Br. at 6-7. This does not address, and therefore does not apprise us of error in, the Examiner's findings regarding Meadows. Meadows teaches that current is supplied by "independent current source pairs" labeled with reference numeral 186 and "coupled to the control logic 166." Meadows 18:8-11. Meadows also teaches that "each of then programmable electrode contacts can be programmed to have a positive (sourcing current), negative (sinking current), or off (no current) polarity." Id. at 18:54--57. Accordingly, Appellants do not apprise us of error. 5 Appeal2013-008561 Application 12/952,845 Appellants argue in the Reply Brief that "if the Examiner is relying on [Gord] to reject the independent claims, then it follows that the Examiner should similarly rely on [Gord] to reject the dependent claims." Reply Br. 5. The Examiner's reliance on Gord (as incorporated into Meadows) teaching detail regarding the implementation of the current sources in Meadows to reject the independent claim is consistent with the rejection of the dependent claims. See Adv. Act. 2 ("Column 20[:23]-32 of Meadows discloses the current sources as depicted in Figure 4A are realized as taught by international application W0-00/00251 which is incorporated by reference."). As discussed supra, there is no requirement that the Examiner import additional structure from Gord beyond that incorporated by Meadows. Further, there is no requirement that the additional limitations of dependent claim 3 be satisfied by the same disclosure in the prior art as the limitations in claim 1. Accordingly, Appellants' argument does not apprise us of error by the Examiner. We sustain the rejection of claims 3 and 15. DECISION The Examiner's rejection of claims 1-23 is affirmed. 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 cda 6 Copy with citationCopy as parenthetical citation