Ex Parte Rezai et al

Patent Trial and Appeal Board

Jul 19, 2013

10502820 (P.T.A.B. Jul. 19, 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.
10/502,820 04/12/2005 Ali Rezai 12637/67 2163
26294 7590 07/19/2013
TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300 EAST NINTH STREET, SUITE 1700
CLEVELAND, OH 44114
EXAMINER
DIETRICH, JOSEPH M
ART UNIT PAPER NUMBER
3762
MAIL DATE DELIVERY MODE
07/19/2013 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 ALI REZAI, JORGE ALVARO GONZALEZ-MARTINEZ, and
ASHWINI SHARAN
____________

Appeal 2011-004976
Application 10/502,820
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, MICHELLE R. OSINSKI, and
HYUN J. JUNG, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-32, 34-54, 61, and 62. Claims 33 and 55-
60 are cancelled. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We REVERSE.
Appeal 2011-004976
Application 10/502,820

2
Claimed Subject Matter
Claims 1 and 30 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A method of affecting a sleep disorder in a
subject having the sleep disorder said method
comprising:
a) identifying at least one nucleus in a brain of the
subject, said nucleus being a nucleus of the sleep
circuitry of the brain;
b) directly stimulating the at least one identified
nucleus so as to modulate the nucleus, thereby
affecting the sleep disorder, the at least one
identified nucleus selected from the group
consisting of the locus coeruleus, the dorsal raphe
nucleus, the posterior hypothalamus, the supra-
chiasmatic nucleus of the hypothalamus, the
nucleus reticularis pontis oralis, the nucleus
reticularis pontis caudalis, and the basal forebrain;
and
c) providing an impulse generator including an
internally synchronizable clock for re-
synchronizing the patient’s sleep patterns, wherein
the clock activates stimulation of the at least one
identified nucleus to synchronize the patient’s
abnormal sleep patterns with a normal sleep
pattern.

Rejections
The following Examiner’s rejections are before us for review.
Claims 1-6, 11-32, 34, 35, 40-54, 61, and 62 are rejected under 35
U.S.C. § 103(a) as unpatentable over Lozano (US 6,356,784 B1, iss. Mar.
12, 2002) and Terry (US 5,335,657, iss. Aug. 9, 1994).
Claims 7-10 and 36-39 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lozano, Terry, and Rise (US 6,128,537, iss. Oct. 3, 2000).
Appeal 2011-004976
Application 10/502,820

3
OPINION
Claims 1 and 30 identically recite “providing an impulse generator
including an internally synchronizable clock for re-synchronizing the
patient’s sleep patterns, wherein the clock activates stimulation of the at
least one identified nucleus to synchronize the patient’s abnormal sleep
patterns with a normal sleep pattern.” App. Br., Claims Appendix (emphasis
added). The Examiner does not rely on Lozano but instead relies on Terry to
disclose the claimed “internally synchronizable clock.” Ans. 3-4. The
Appellants contend that “Terry does not describe an internally
synchronizable clock.” App. Br. 11.
The Examiner finds that Terry discloses “it is known to provide an
impulse generator (e.g. 10) including an internally synchronizable clock for
resynchronizing the patient’s sleep patterns, wherein the clock activates
stimulation to synchronize the patient’s abnormal sleep patterns with normal
sleep patterns (e.g. column 4, lines 38 - 43).” Ans. 4. The Appellants
correctly point out that Terry, at column 4, lines 38-43 “simply states that
stimulation of the vagal nerve will produce synchronous EEG.” App. Br.
11. See also Terry, col. 3, ll. 15-50. Further, the Examiner finds that:
Because Terry synchronizes the EEG in order to treat a sleep
disorder, there is necessarily an internally sychronizable clock
that re-synchronizes the patient’s sleep patterns. Terry also
states in column 4, lines 38 - 43 that a stimulation is sent to a
target site in order to synchronize a patient’s brain activity with
that of a normal intermediate stage of sleep.
Ans. 8 (emphasis added).
The Examiner, however, has not provided adequate evidence and/or
technical reasoning to find that “there is necessarily an internally
sychronizable clock that re-synchronizes the patient’s sleep patterns” in
Appeal 2011-004976
Application 10/502,820

4
Terry’s disclosure. See Reply Br. 4-5. As such, the Examiner’s conclusion
of obviousness that “[i]t would have been obvious to one having ordinary
skill in the art at the time the invention was made to modify the impulse
generator as taught by Lozano with the internally synchronizable clock as
taught by Terry . . . since such a modification would provide the predictable
results of returning a patient’s brain activity to normal sleep levels” (Ans. 4)
lacks rational underpinning.
Thus, the rejection of claims 1 and 30, and their dependent claims 2-6,
11-29, 31, 32, 34, 35, 40-54, 61, and 62, as unpatentable over Lozano and
Terry is not sustained.
The remaining rejection based on Lozano and Terry in combination
with Rise relies on the same unsubstantiated finding discussed above. See
Ans. 7-8. As such, we cannot sustain the rejection of claims 7-10 and 36-39
as unpatentable over on Lozano, Terry, and Rise.

DECISION
We REVERSE the rejections of claims 1-32, 34-54, 61, and 62.

REVERSED

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