Ex Parte Carbunaru et alDownload PDFPatent Trial and Appeal BoardFeb 27, 201712501170 (P.T.A.B. Feb. 27, 2017) Copy Citation 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. 12/501,170 07/10/2009 Rafael Carbunaru 08-00215-01 3793 7590 Faegre Baker Daniels LLP PATENT DOCKETING - INTELLECTUAL PROPERTY (32469) 2200 WELLS FARGO CENTER 90 SOUTH SEVENTH STREET MINNEAPOLIS, MN 55402-3901 EXAMINER FAIRCHILD, MALLIKA DIPAYAN ART UNIT PAPER NUMBER 3762 NOTIFICATION DATE DELIVERY MODE 03/01/2017 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 @ F aegreB D .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 RAFAEL CARBUNARU, MICHAEL MOFFITT, KRISTEN JAAX, ANDREW DIGIORE, and COURTNEY LANE Appeal 2014-006191 Application 12/501,170 Technology Center 3700 Before LYNNE H. BROWNE, LISA M. GUIJT, and ERIC C. JESCHKE, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-10 and 19-29. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and designate our affirmance of claims 1—5, 19, 20, and 22—29 under 35 U.S.C. § 102(b) as anticipated by Gliner as a NEW GROUND OF REJECTION, and we also enter a NEW GROUND OF 1 Appellants identify the real party in interest as Boston Scientific Neuromodulation Corporation. Appeal Br. 2 Appeal 2014-006191 Application 12/501,170 REJECTION for claims 1—9, 19, 20, and 22—29 under 35 U.S.C. § 103(a) as unpatentable over Gliner and Firlik, and a NEW GROUND OF REJECTION for claims 8 and 9 under 35 U.S.C. § 103(a) as unpatentable over Gliner, pursuant to our authority under 37 C.F.R. § 41.50(b). CLAIMED SUBJECT MATTER Claim 1, reproduced below, is the sole independent claim on appeal. 1. A method of providing therapy to a patient, the patient having a neuron to which a sub-threshold biological electrical stimulus is applied, comprising: applying electrical noise energy to the neuron, wherein resonance between the biological electrical stimulus and the electrical noise energy is created, such that an action potential is propagated along the axon of the neuron. REJECTIONS* 2 I. Claims 1, 2, 4, 5, and 10 stand rejected under 35 U.S.C. § 102(b) as anticipated by Milojevic (US 2005/0033377 Al; pub. Feb. 10, 2005). II. Claims 1 and 2 stand rejected under 35 U.S.C. § 102(b) as anticipated by Firlik (US 7,146,217 B2; iss. Dec. 5, 2006). III. Claims 1—9 and 19-29 stand rejected under 35 U.S.C. § 102(b) as anticipated by Gliner (US 2006/0015153 Al; pub. Jan. 19, 2006). 2 The rejection of claim 29 under 35 U.S.C. § 112(b) has been withdrawn. See Final Act. 11—12; Adv. Act. 2; Ans. 4. 2 Appeal 2014-006191 Application 12/501,170 IV. Claims 8, 9, 27, and 28 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Milojevic. V. Claims 19-26 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Milojevic and Kosugi (US 4,338,945; iss. July 13, 1982). ANALYSIS Rejection I Regarding independent claim 1, the Examiner finds that Milojevic discloses a method of applying a subthreshold electrical noise energy, for example, plasticity informative stimuli. Final Act. 12 (citing Milojevic, Abstract, 146). The Examiner determines that “under ‘the broadest reasonable interpretation, any non-intrinsic signal can be considered as noise since it is not created by the body.’” Ans. 5; see also id. at 8 (“the broadest reasonable interpretation of noise is that is any external signal that is applied to a system”). The Examiner further explains that “[njoise is relative” and that “[i]n the absence of a definition in the specification^], any external signal that interfere^] with a system can be considered noise.” Ans. 10. Appellants argue, inter alia, that the Examiner’s finding that Milojevic’s plasticity informative stimuli is electrical noise energy lacks support. Appeal Br. 4; see also Reply Br. 1—2. In particular, Appellants submit that the claim term “electrical noise” means “electromagnetic radiation (as light or radio waves) that is composed of several frequencies that involves random changes in frequency or amplitude,” and that “[a]s applied to the electrical energy of the claimed invention, this means that the 3 Appeal 2014-006191 Application 12/501,170 electrical energy involves random changes in frequency or amplitude.” Id. at 6 (citing Merriam Webster’s Collegiate Dictionary, Tenth Edition). In support, Appellants submit that the Specification provides “various examples of electrical noise energy” {id. at 5 (citing Spec., Figs. 6a—6c, 7 a— 7b)) and “various types of electrical noise energies that are generated using a stochastic process” {id. at 7). During patent examination, claims are to be given their broadest reasonable interpretation consistent with the specification, with claim language being read in light of the specification as it would be interpreted by one of ordinary skill in the art. See In re Am. Acad, of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (emphasis added). The Specification describes circuitry that is configured for generating electrical noise energy. Spec. 143. In particular, the Specification states that “the electrical noise energy may be generated pseudo-randomly (i.e., a process that appears random, but is not, and appears to exhibit statistical randomness while being generated by an entirely deterministic causal process) or random.” Id. The Specification also describes Figure 6a as depicting “continuous electrical noise energy generated in accordance with a Gaussian random process”; Figure 6b depicts “sinusoidal electrical noise energy having a randomly varying phase”; and Figure 6c as depicting “an electrical noise energy pulse train having a randomly varying pulse amplitude, pulse width, and pulse rate.” Id. Tflf 24—26. To interpret the claim term “electrical noise energy” to be any electrical energy applied to a neuron by an implantable pulse generator (or 4 Appeal 2014-006191 Application 12/501,170 “IPG”) as the Examiner has done, in the context of the Specification, would render the claim term “noise” meaningless. Although we agree with Appellants that the Examiner’s definition of “electrical noise energy” is overly broad, Appellants’ definition of the claim term “electrical noise energy,” which includes only random changes in only two parameters (i.e., frequency or amplitude), is also inconsistent with the Specification, which defines electrical noise energy as also including pseudo-random changes that are not random in parameters such as phase, pulse width, and pulse rate. Thus, we modify Appellants’ definition in light of the Specification, and more broadly interpret the claim term electrical noise energy as meaning electrical energy composed of at least one randomly or pseudo-randomly changing parameter, wherein pseudo-randomly means appearing as random, for example, by exhibiting statistical randomness while being generated by an entirely deterministic causal process. Milojevic discloses “delivering electrical plasticity informative stimuli to a neural network” (Milojevic, Abstract), such that “[b]y applying plasticity informative stimuli, the entire auditory system may be stimulated, so maintaining its plasticity” {id. 1335). However, the Examiner has not determined, nor can we find, that Milojevic discloses that the stimuli is composed of at least one randomly or pseudo-randomly changing parameter. Accordingly, we do not sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 102(b) as anticipated by Milojevic, and claims 2, 4, 5, and 10 depending therefrom. 5 Appeal 2014-006191 Application 12/501,170 Rejection II The Examiner finds that Firlik teaches the limitations of independent claim 1. Final Act. 13 (citing Firlik, 16:7—17:22, Fig. 5C). Appellants argue that “the Examiner has improperly construed ‘electrical noise energy,’” as submitted supra, and therefore, “Firlik does not disclose the combination of the elements required by these claims.” Appeal Br. 12; Reply Br. 3. Similar to the description in the Specification, Firlik discloses applying a subthreshold potential to neurons to raise their resting potentials, such that when the neurons receive another excitatory input (i.e., usual intrinsic triggers), even a small input exceeds the gap between the raised resting potential and the threshold potential thereby inducing action potential in the neurons. Firlik, 16:7—18, 17:4—17); cf Spec. ]Hf 60, 61. Although Firlik discloses that “the pulse form of the electrical stimulation (e.g., the frequency, pulse width, wave form, and voltage potential) is selected to raise the resting potential in [the neurons] to a level that is less than a threshold potential” (Firlik, 15:29-44), we could not find, in Firlik, a disclosure that the electrical energy is composed of at least one randomly or pseudo- randomly changing parameter, which is required by the definition of the claim term “electrical noise energy” as discussed supra. Thus, we do not sustain the Examiner’s rejection of claims 1 and 2 under 35 U.S.C. § 102(b) as anticipated by Firlik. 6 Appeal 2014-006191 Application 12/501,170 Rejection III Independent claim 1 and depending claims 2—5, 19, 20, 23, and 25—29 The Examiner finds that Gliner teaches the limitations of independent claim 1. Final Act. 13—14 (citing Gliner, Abstract, || 37, 41, 71, 72, Fig. 1). In particular, the Examiner finds that Gliner discloses that the electrical stimulation may be pseudo-random, and thus, electrical noise energy, as claimed. Id. at 14; see Gliner 172 (“stimulation signals exhibit[] random, and/or pseudorandom characteristics”); see also id. 176. The Examiner also finds that because Gliner teaches stimulation to treat multiple sclerosis, which involves neurons with damaged myelin sheaths, Gliner teaches applying the electrical stimulation to a neuron. Id. at 14; see Gliner 141. Appellants argue that “Gliner does not specifically disclose that a pseudo-random signal is delivered to the patient to treat multiple sclerosis,” and that, notwithstanding, “there is no disclosure that the pseudo-random signal is delivered to a neuron (even if demylineated) in a manner that creates resonance between a biological signal, such that an action potential propagates along the axon of the neuron.” Appeal Br. 13; see also Reply Br. 3. We agree with Appellants that Gliner’s disclosure of treating multiple sclerosis with neural stimulation therapy does not expressly disclose “applying electrical noise energy to [a] neuron, wherein resonance between the biological electrical stimulus and the electrical noise energy is created, such that an action potential is propagated along the axon of the neuron,” as recited in claim 1 set forth supra. However, Gliner also discloses that 7 Appeal 2014-006191 Application 12/501,170 the application of neural stimulation at a subthreshold level may raise or generally raise membrane potentials corresponding to a set of target neural populations while avoiding the generation of a sufficient of statistically significant number of action potentials capable of triggering a neural function corresponding to such target neural populations as a result of the subthreshold stimulation alone. Thus, the subthreshold stimulation by itself, in the absence of addition neural input (e.g., arising from neurofimctionally relevant patient behavior . . .), fails to drive a neural function correspond to a target neural population or ensemble to which it is directed. Gliner 170. Implicit in this teaching from Gliner is the fact that adding a neural input from neurofimctionally relevant patient behavior would drive a neural function, because of the raised subthreshold level due to the electrical stimulation. Gliner further discloses that “[stimulation may be applied at subthreshold . . . levels in one or more . . . aperiodic (e.g., chaotic) and/or pseudo-random manners” (Gliner, Abstract) and also that “[essentially any of [the disclosed] approaches for . . . affecting neural stimulation efficacy may be combined in a variety of manners” {id. 1156). See also id. 172 (“the pulse generating unit 1106 may generate . . . stimulation signals exhibiting . . . chaotic, random, and/or pseudorandom characteristics”). In other words, Gliner teaches that when applying subthreshold stimulation, the electrical energy may be pseudo-random (or, by definition, electrical noise energy). Thus, Gliner discloses applying electrical noise energy (i.e., Gliner’s random or pseudo-random signal), wherein a resonance between the 8 Appeal 2014-006191 Application 12/501,170 biological electrical stimulus (i.e., Gliner’s neurofimctionally relevant patient behavior) and a signal would create an action potential that would propagate along the axon of the neuron, as claimed (i.e., absent a neurofimctionally relevant patient behavior, the subthreshold stimulation by itself would not create such a potential). Accordingly, we find that Gliner anticipates claim 1. Alternatively, Firlik expressly discloses applying a subthreshold potential to neurons to raise their resting potentials, such that when the neurons receive another excitatory input (i.e., usual intrinsic triggers), even a small input exceeds the gap between the raised resting potential and the threshold potential to induce action potential in the neurons. Firlik, 16:7—18, 17:4—17. As discussed supra, Gliner discloses applying electrical noise energy (i.e., a random or pseudo-random signal), wherein resonance between the biological electrical stimulus (i.e., Gliner’s neurofimctionally relevant patient behavior) and the electrical noise energy is created. Thus, we determine that in view of the teachings of Gliner and Firlik, one skilled in the art would have been led to apply Gliner’s electrical noise energy to create a subthreshold potential, recognizing that when the gap is exceeded by usual intrinsic triggers, as disclosed in Firlik, the resonance required for an action potential to be propagated along the axon of the neuron is created, as required by claim. The combination of familiar elements, such as Gliner’s and Firlik’s techniques, according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). 9 Appeal 2014-006191 Application 12/501,170 Appellants chose not to present separate arguments for the patentability of claims 2—5, 19, 20, 23, and 25—29 depending therefrom. Accordingly, we sustain the Examiner’s rejection of independent claim 1, and claims 2—5, 19, 20, 23, and 25—29 depending therefrom, under 35 U.S.C. § 102(b) as anticipated by Gliner, and because our affirmance relies on disclosures in Gliner not relied upon by the Examiner, we designate our affirmance as a NEW GROUND OF REJECTION to afford Appellants an opportunity to address the rejection as articulated in this Decision. We further enter a NEW GROUND OF REJECTION of independent claim 1, and claims 2—5, 19, 20, 23, and 25—29 depending therefrom, under 35 U.S.C. § 103(a) as unpatentable over Gliner and Firlik, adopting the Examiner’s findings with respect to the dependent claims as set forth in the Final Action. See Final Act. 13—15. Dependent claims 6 and 7 Claim 6 depends from independent claim 1 and further recites “wherein the neuron is associated with a damaged anatomical region of the patient, the method further comprising exercising the anatomical region while applying the electrical noise energy to the neuron.” Appeal Br. 23 (Claims App.). Claim 7 depends from claim 6 and further recites “wherein the anatomical region is a damaged limb.” Id. The Examiner relies on Gliner for disclosing these limitations, and further notes that “Gliner teaches that they treat dysfunctions such as Parkinson’s disease, stroke and tremor and that the[] stimulation session occurs in conjunction with a behavioral task or therapy.” Final Act. 14 (citing Gliner H 41, 44). 10 Appeal 2014-006191 Application 12/501,170 Appellants argue that because the Examiner relied on the treatment of multiple sclerosis for disclosing the limitations of claim 1, the Examiner cannot now rely on “the delivery of electrical energy to treat something other than multiple sclerosis” for the limitations of the dependent claims. Appeal Br. 15. Moreover, Appellants argue that “while Gliner teaches that FES [(or functional electrical stimulation)] can be applied [in] conjunction with a behavioral task, this is far from a disclosure that FES is applied to treat multiple sclerosis.” Id. at 15—16. We apply Gliner to claim 1 as discussed supra, without reliance on the Examiner’s finding with respect to multiple sclerosis. Firlik discloses that “[f]or example, if a stroke patient has lost the use of a limb, the patient can be treated by applying the electrical therapy to a stimulation site where the intended neural activity is present while the affected limb is also subject to physical therapy.” Firlik, 15:5—9. In view of these teachings, we determine that it would have been obvious to modify Gliner’s method for applying random or pseudo-random electrical stimulation to neurons, to include exercising the anatomical region, for example, a damaged limb, while applying the stimulation to the neuron, as taught by Firlik, to provide “[an] adjunctive therap[y] to rehabilitate damaged portions of the brain,” as taught by Firlik. Id. at 15:1—3. Notably, as determined by the Examiner, Gliner discloses that adjunctive therapy is desirable, in that treatment may occur in conjunction with behavioral tasks or therapy; Firlik is simply more specific about the type of therapy, i.e., physical exercise of the damaged limb. As noted supra,"Xt]he combination of familiar elements according to 11 Appeal 2014-006191 Application 12/501,170 known methods is likely to he obvious when it does no more than yield predictable results,” KSR Int 7, 550 U.S. at 416. Accordingly, we do not sustain the Examiner’s rejection of claims 6 and 7 under 35 U.S.C. § 102(b) as anticipated by Gliner, and we enter a NEW GROUND OF REJECTION of claims 6 and 7 under 35 U.S.C. § 103(a) as unpatentable over Gliner and Firlik. Dependent claims 8 and 9 Claim 8 depends from independent claim 1 and further recites “wherein propagation of the action potential along the axon of the neuron initiates or supplements neuroplasticity in the central nervous system of the patient.” Appeal Br. 23 (Claims App.). Claim 9 depends from claim 1 and further recites “wherein the neuron is damaged, and the propagation of the action potential along the neuron is afferent, such that it reduces neuroplasticity in the central nervous system.” Id. The Examiner relies on Gliner for teaching that “the application of the neural stimulation affects neural stimulation efficacy through one or more mechanism,” and concludes that Gliner therefore teaches the limitations of claims 8 and 9. Final Act. 14 (citing Gliner 138). The Examiner finds that Gliner teaches electrical stimulation for treating neurological dysfunction corresponding to multiple sclerosis, phantom limb pain, tremor, stroke, wherein changes (such as weakening in the current synaptic connections due to disuse of the limb or formation of new synaptic connections due to misfiring or compensatory movements that the patient performs to overcome the loss of function of the limb) occur in the synaptic connections between the neurons of the central nervous system due to the loss of a limb or tremor or 12 Appeal 2014-006191 Application 12/501,170 multiple sclerosis. When an electrical noise energy... is applied as taught by Gliner to treat the neurologic dysfunction, the propagation of the action potential will cause strengthening o[f] the current synaptic connections or weakening of the synaptic connections that occurred due to compensation and therefore will initiate or supplement or reduce the neuroplasticity of the central nervous system as claimed. Ans. 31 (citing Gliner || 41, 44, 51). Appellants argue, inter alia, that “there is no disclosure in Gliner that electrical energy is applied to a neuron to create biological resonance with a biological signal in a manner that increases or reduces neuroplasticity in the central nervous system.” Reply Br. 5. We apply Gliner to claim 1 as discussed supra, without reliance on the Examiner’s finding with respect to multiple sclerosis. The Specification defines “neuroplasticity” as “a neural phenomenon” that “changes the organization of the brain in response to experiences.” Spec. 1 8. The Specification states that “the brain may be aided in recovery from an injury ... by initiating or supplementing neuroplasticity in a portion of the patient’s nervous system, including the peripheral nerves, spinal cord, and/or brain.” Spec. 1 66. The Specification also discloses, with apparent application to a reduction in neuroplasticity, that sub-threshold electrical noise energy may be applied to a severed nerve that is regenerating. Thus, although it may be a long process for the nerve to regenerate, the functionality of the regenerating nerve may be maintained, as well as the cerebral neurons associated with the functionality of the severed nerve, by allowing afferent signals to continue to be sent to the brain via 13 Appeal 2014-006191 Application 12/501,170 the regenerating nerve, so that the neurological functions do not “take over” the regenerating nerve’s territory via neuroplasticity. Spec. 1 67. Gliner discloses that “[o]ne or more effects associated with or arising from the application of neural stimulation in accordance with certain embodiments of the invention may correspond to neuroplastic, neuroregenerative, neuroprotective, and/or neurogenic effects.” Gliner 138. Gliner further discloses that “[njeural stimulation provided, applied, or delivered in accordance with certain embodiments of the present invention . . . may facilitate and/or effectuate neuroplastic changes within a patients’ brain.” Gliner 1173 (emphasis added). Thus, Gliner teaches facilitation and reduction in neuroplasticity using neural stimulation. However, we agree with Appellants that Gliner fails to explicitly disclose that it is the electrical noise energy (or random or pseudo-random electrical stimulus) applied to the embodiment in Gliner wherein the neuron implicitly creates a resonance with the biological electrical stimulus ((see Gliner 170 (discussed supra)), as required by claim 1, that results in facilitating or reducing neuroplastic changes. Notwithstanding this fact, we determine that it would be within the knowledge of one skilled in the art to understand from Gliner that such subthreshold stimulation would increase neuroplasticity for such neurons and also reduce neuroplasticity (or taking over) at other sites due to the functioning of such neurons. Moreover, a claim defining a method must be for the method or means of producing the result, and not for the result itself. See Corning v. 14 Appeal 2014-006191 Application 12/501,170 Burden, 56 U.S. 252, 268 (1853). Appellants’ argument with respect to claims 8 and 9 attempts to distinguish prior art methods by claiming the result of a prior art method, i.e., initiation, supplementation, or reduction of neuroplasticity in the central nervous system, not by defining a nonobvious Accordingly, we do not sustain the Examiner’s rejection of claims 8 and 9 under 35 U.S.C. § 102(b) as anticipated by Gliner. However, we enter a NEW GROUND OF REJECTION of claims 8 and 9 under 35 U.S.C. § 103(a) as unpatentable over Gliner. Further, because we entered a new ground of rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Gliner and Firlik, we enter a NEW GROUND OF REJECTION of claims 8 and 9, which depend from claim 1, under 35 U.S.C. § 103(a) as unpatentable over Gliner and Firlik. Dependent claim 21 Claim 21 depends from claim 1 and further recites “wherein the electrical noise energy is a continuous signal.” Appeal Br. 24 (Claims App.) ; see Spec., Fig. 7a, cf. id. at Fig. 7b. The Examiner finds that Gliner teaches that the electrical stimulation is continuous. Final Act. 15 (citing Gliner || 72—77, Fig. 3B). Appellants argue that Gliner does not disclose a continuous signal, for example, the signal depicted in Figure 3B is a pulsed, not continuous, signal. Appeal Br. 18; see also Reply Br. 5 (“See arguments in Appeal Brief.”). The Examiner responds that Gliner’s disclosure of a sinusoidal signal is a continuous signal. Ans. 34 (citing Gliner | 87). 15 Appeal 2014-006191 Application 12/501,170 A preponderance of the evidence fails to support the Examiner’s finding that Gliner’s disclosure of a sinusoidal signal is a disclosure of a continuous signal, and the signal depicted in Figure 3B of Gliner may not be continuous due to the intervals between the pulses. Accordingly, we do not sustain the Examiner’s rejection of claim 21 under 35 U.S.C. § 102(b) as anticipated by Gliner. Dependent claim 22 Claim 22 depends from claim 1 and further recites “wherein the electrical noise energy is a sinusoidal signal with randomly varying phase.” Appeal Br. 24 (Claims App.). The Examiner finds that Gliner teaches “aperiodic” sinusoidal signals “(i.e. sinusoidal with randomly varying phase).” Ans. 18 (citing Gliner || 72, 87); see also Final Act. 15 (citing Gliner || 72—77, Fig. 3B). Appellants argue that “[t]he terms ‘periodic’ and ‘aperiodic’ do not mean that the electrical signals are sinusoidal.” Appeal Br. 18. Gliner discloses that “square waveforms and/or sinusoidal waveforms are employed for purpose of example . . . [hjowever, various embodiments of the present invention may employ, generate, apply, or deliver stimulation signals exhibiting essentially any type of signal or waveform characteristic at one or more times.” Gliner | 87 (emphasis added). Further, Gliner discloses that “the pulse generating unit 1106 may generate stimulation signals exhibiting a set of. .. aperiodic parameter characteristics or values at one or more times” (emphasis added), wherein “aperiodic parameter values may correspond to signals that are aperiodic . . . relative to one or 16 Appeal 2014-006191 Application 12/501,170 more stimulation signal parameters.” Id. 177. Thus, Appellants’ argument does not apprise us of error in the Examiner’s finding or reasoning. Accordingly, we sustain the Examiner’s rejection of claim 22 under 35 U.S.C. § 102(b) as anticipated by Gliner, however, because we designated our affirmance of claim 1 as a new ground of rejection under 35 U.S.C. § 102(b) as anticipated by Gliner, we also designate our affirmance of claim 22, which depends from claim 1, as a NEW GROUND OF REJECTION under 35 U.S.C. § 102(b) as anticipated by Gliner. Further, because we entered a new grounds of rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Gliner and Firlik, we enter a NEW GROUND OF REJECTION of claim 22, which depends from claim 1, under 35 U.S.C. § 103(a) as unpatentable over Gliner and Firlik. Dependent claim 24 Claim 24 depends from claim 1 and further recites “wherein the electrical noise energy is pulsed on and off.” Appeal Br. 24 (Claims App.). The Examiner finds that Gliner teaches that the electrical signal is “pulsed on and off.” Ans. 18 (citing Gliner || 72—77, Fig. 3B). Appellants argue that “[t]he pulsed electrical signal illustrated in [Figure 3B of Gliner] is not electrical noise energy.” Appeal Br. 19. For the reasons stated supra with respect to claim 1, we agree with the Examiner that Gliner teaches that when applying subthreshold stimulation, the electrical energy may be pseudo-random (or, by definition, electrical noise energy). Thus, Gliner teaches electrical noise energy that is pulsed on and off. 17 Appeal 2014-006191 Application 12/501,170 Accordingly, we sustain the Examiner’s rejection of claim 24 under 35 U.S.C. § 102(b) as anticipated by Gliner, however, because we designated our affirmance of claim 1 as a new ground of rejection under 35 U.S.C. § 102(b) as anticipated by Gliner, we also designate our affirmance of claim 24, which depends from claim 1, as a NEW GROUND OF REJECTION under 35 U.S.C. § 102(b) as anticipated by Gliner. Further, because we entered a new ground of rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Gliner and Firlik, we enter a NEW GROUND OF REJECTION of claim 24, which depends from claim 1, under 35 U.S.C. § 103(a) as unpatentable over Gliner and Firlik. Rejection IV Claims 8—9, 27, and 28 depend from independent claim 1, which stands rejected by the Examiner under 35 U.S.C. § 102(b) as anticipated by Milojevic. The Examiner’s reliance on Milojevic for the rejection of claims 8—9, 27, and 28 does not cure the deficiencies in the Examiner’s findings with respect to Milojevic and the rejection of claim 1. Accordingly, because we do not sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 102(b) as anticipated by Milojevic, we also do not sustain the Examiner’s rejection of claims 8—9, 27, and 28 under 35 U.S.C. § 103(a) as unpatentable over Milojevic. Rejection V Claims 19-26 depend from independent claim 1, which stands rejected by the Examiner under 35 U.S.C. § 102(b) as anticipated by Milojevic. The Examiner’s reliance on Milojevic for the rejection of claims 18 Appeal 2014-006191 Application 12/501,170 19—26 does not cure the deficiencies in the Examiner’s findings with respect to Milojevic and the rejection of claim 1. Accordingly, because we do not sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 102(b) as anticipated by Milojevic, we also do not sustain the Examiner’s rejection of claims 19—26 under 35 U.S.C. § 103(a) as unpatentable over Milojevic. DECISION The Examiner’s decision to reject claims 1, 2, 4, 5, and 10 under 35 U.S.C. § 102(b) as anticipated by Milojevic is REVERSED. The Examiner’s decision to reject claims 1 and 2 under 35 U.S.C. § 102(b) as anticipated by Firlik is REVERSED. The Examiner’s decision to reject claims 1—5, 19, 20, and 22—29 under 35 U.S.C. § 102(b) as anticipated by Gliner is AFFIRMED and designated a NEW GROUND OF REJECTION. The Examiner’s decision to reject claims 6—9 and 21 under 35 U.S.C. § 102(b) as anticipated by Gliner is REVERSED The Examiner’s decision to reject claims 8, 9, 27, and 28 under 35 U.S.C. § 103(a) as unpatentable over Milojevic is REVERSED. The Examiner’s decision to reject claims 19—26 under 35 U.S.C. § 103(a) as unpatentable over Milojevic and Kosugi is REVERSED. We enter a NEW GROUND OF REJECTION of claims 1-9, 19, 20, and 22—29 under 35 U.S.C. § 103(a) as unpatentable over Gliner and Firlik. 19 Appeal 2014-006191 Application 12/501,170 We enter a NEW GROUND OF REJECTION of claims 8 and 9 under 35 U.S.C. § 103(a) as unpatentable over Gliner. This decision contains new grounds 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 that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following twro options with respect to the new grounds 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 proceeding will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under 41.52 by the Board upon the same record.. . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b) 20 vo n Copy with citationCopy as parenthetical citation