Ex Parte Pianca

Patent Trial and Appeal Board

Mar 29, 2016

13196402 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/196,402 08/02/2011
50638 7590 03/30/2016
Boston Scientific Neuromodulation Corp.
c/o Lowe Graham Jones
701 Fifth Avenue
Suite 4800
Seattle, WA 98104
FIRST NAMED INVENTOR
Anne M. Pianca
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-1-430.2 3761
EXAMINER
MANUEL, GEORGE C
ART UNIT PAPER NUMBER
3762
MAILDATE DELIVERY MODE
03/30/2016 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 ANNE M. PIANCA
Appeal 2014-001741 1,2
Application 13/196,402
Technology Center 3700
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appellant's invention "relates to medical leads and microelectrode
recording systems used for functional neurosurgical procedures." Spec. ,-r 3.
1 Our decision references Appellant's Specification ("Spec.," filed Aug. 2,
2011), Appeal Brief ("Appeal Br.," filed Oct. 1, 2013), and Reply Brief
("Reply Br.," filed Nov. 19, 2013), as well as the Final Office Action ("Final
Action," mailed May 7, 2013) and the Examiner's Answer ("Answer,"
mailed Oct. 23, 2013).
2 "The real party in interest in this appeal is Boston Scientific
Neuromodulation Corporation." Appeal Br. 2.
Appeal2014-001741
Application 13/196,402
Claims l and 6 are the only independent claims under appeal. We
reproduce below both of the independent claims as representative of the
appealed claims.
1. A system for recording and stimulating excitable neural
tissue, the system comprising:
a microelectrode, configured and dimensioned to be
completely passable through a lumen along the axial length of a
stimulating lead, commencing from either a first opening or a
second opening of the stimulating lead; and
a removable connector for attaching and detaching the
microelectrode from the stimulating lead, the removable
connector including a locking mechanism.
6. A system for recording and stimulating excitable neural
tissue, the system comprising:
a stimulation lead, having a lumen along its axial length,
the lumen having two openings, a first opening at the proximal
end of the lead, a second opening at the distal end of the lead;
a microelectrode, configured and dimensioned to be
completely passable through the lumen of the lead, commencing
from either the first opening or the second opening of the lead;
and
a removable connector attached to the distal end of the
microelectrode.
Appeal Br., Claims App.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
claims 1-16 on the ground of nonstatutory obviousness-type double
patenting as unpatentable over claims 1-12 of Pianca '200
(US 8,010,200 Bl, iss. Aug. 30, 2011);
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Appeal2014-001741
Application 13/196,402
claims 1-5 on the ground of nonstatutory obviousness-type double
patenting as unpatentable over claims 1-5 of Pianca '701 (US 7,177,701 Bl,
iss. Feb. 13, 2007); and
claims 1, 4---6, 10, and 12-16 under 35 U.S.C. § 102(b) as anticipated
by Edwards (US 5,743,870, iss. Apr. 28, 1998).
See Final Action 2--4; see also Answer 2-3.
ANALYSIS
The Obviousness-Type Double Patenting Rejections
As set forth above, the Examiner rejects claims 1-16 on the ground of
nonstatutory obviousness-type double patenting as unpatentable over claims
1-12 of Pianca '200, and rejects claims 1-5 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claims 1-5 of
Pianca '701. Appellant does not argue that the Examiner's rejections are in
error. Thus, we summarily sustain the obviousness-type double patenting
rejections of claims 1-16.
The § 102(b) Rejection
Independent claim 1, from which claims 4, 5, 13, and 14 depend,
requires "a removable connector for attaching and detaching the
microelectrode from the stimulating lead." Appeal Br., Claims App. The
Examiner relies on Edwards' s retaining member 14 to teach the claimed
removable connector. See Final Action 4, Answer 4. More particularly, the
Examiner determines, "[Edward's Figure] 4 shows retaining member 14 as a
removable connector attached to the distal end of the needle electrode 18,"
and "[Figure] 6 in Edwards shows the retaining member 14 is used as a
removable connector that attaches and detaches the needle electrode 18 from
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Appeal2014-001741
Application 13/196,402
the cannula 12." Answer 4. We agree with Appellant (see Appeal Br. 5-6,
Reply Br. 3), however, that the Examiner does not persuasively establish
that Edwards teaches the claimed removable connector.
Specifically, regardless of whether retaining member 14 is removable
from cannula 12, neither of the cited figures show that retaining member 14
attaches and detaches needle electrode 18 (which the Examiner relies on for
the claimed microelectrode) from cannula 12. See Edwards, Figs. 4 and 6.
Further, the Examiner does not reference any other portion of Edwards, or
provide a persuasive line of technical reasoning to establish that retaining
member 14 attaches and detaches needle electrode 18 from cannula 12.
Thus, we do not sustain the anticipation rejection of claims 1, 4, 5, 13,
and 14.
Independent claim 6, from which claims 10, 12, 15, and 16 depend,
requires the following limitations: "a stimulation lead, having a lumen along
its axial length" and "a microelectrode, configured and dimensioned to be
completely passable through the lumen of the lead." Appeal Br., Claims
App. The Examiner finds that "the cannula 12 and the needle electrode 18,
in combination, form the claimed stimulation lead," and that "[t]he
advancing of needle electrode 18 [as described in column 6, lines 20---22] is
clearly a disclosure of a separate microelectrode that can pass through the
lumen of this combined stimulation lead 12/18." Answer 3 (emphasis
added); see also Final Action 4. Based on our review of the Examiner's
findings and Appellant's arguments (see Appeal Br. 3-5, Reply Br. 1-2), we
determine that the Examiner does not establish that Edwards teaches a
stimulation lead and a microelectrode as required by claim 6.
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Appeal2014-001741
Application 13/196,402
Specifically, the portion of Edwards cited by the Examiner as teaching
"a separate microelectrode" (Answer 3) states, "[a]s shown in FIG. 3, when
electromagnetic energy delivery device 18 is advanced from distal end 12'
[of cannula 12] an optical path length is established." Edwards, col. 6,
11. 20-22. This portion of Edwards and corresponding Figure 3 only appear
to disclose a single electrode 18 passing through cannula 12, and the
Examiner does not provide a citation to anything in Edwards that shows or
describes cannula 12 and needle electrode 18 (both of which are relied upon
by the Examiner for the claimed stimulation lead) in combination with a
separate microelectrode, such as, for example, another microelectrode 18.
Inasmuch as the Examiner relies on cannula 12 and needle electrode 18 to
meet the claim limitation of "a stimulation lead," but fails to establish that
Edwards discloses a separate electrode to meet the limitation of "a
microelectrode," we do not sustain the anticipation rejection of claims 6, 10,
12, 15, and 16.3
3 We note that claim 1 includes limitations similar to those we discuss with
reference to claim 6. See Appeal Br., Claims App., Claim 1, n.b. ("a
removable connector for attaching and detaching the microelectrode from
the stimulating lead."). Thus, we also do not sustain the anticipation
rejection of claims 1, 4, 5, 13, and 14 for reasons similar to those discussed
with respect to claim 6.
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Appeal2014-001741
Application 13/196,402
DECISION
We summarily AFFIRM the Examiner's rejections of claims 1-16 on
the ground of nonstatutory obviousness-type double patenting.
We REVERSE the Examiner's rejection of claims 1, 4---6, 10, and 12-
16 under 35 U.S.C. § 102(b).
AFFIRMED
6