Ex Parte Daly

Patent Trial and Appeal Board

Mar 15, 2013

11192014 (P.T.A.B. Mar. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHRISTOPHER NEWTON DALY
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Appeal 2011-001490
Application 11/192,014
Technology Center 3700
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Before JAMES P. CALVE, WILLIAM A. CAPP, and JILL D. HILL,
Administrative Patent Judges.

CALVE, 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, 3-21, and 35. App. Br. 2.1 Claims 2 and 22-34 are cancelled. Id.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Refers to Appeal Brief, filed March 18, 2010.
Appeal 2011-001490
Application 11/192,014

2
CLAIMED SUBJECT MATTER
Claim 1, 14, and 35 are independent. Claim 1 is reproduced below:
1. A method for delivering a stimulating signal by a
stimulating medical device having a plurality of electrodes,
comprising:
transmitting an instruction to the medical device after
implantation of the medical device in a recipient;
electrically coupling a first set of at least two of the plurality of
electrodes based on the instruction; and
simultaneously, via a single current source, delivering to the
first set of electrically-coupled electrodes a stimulation signal
suitable for application to a target tissue of a recipient.

REJECTIONS
Claims 1, 3-6, 8, 9, 14-19, and 35 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Loeb ‘970 (US 5,649,970; iss. Jul. 22, 1997).
Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Loeb ‘970 and Overstreet (US 7,251,530 B1; iss. Jul. 31, 2007).
Claim 10 is rejected under § 103(a) as unpatentable over Loeb ‘970.
Claims 11-13 are rejected under § 103(a) as unpatentable over Loeb
‘970 in view of Blamey (US 7,171,272 B2; iss. Jan. 30, 2007) or Overstreet.
Claims 20 and 21 are rejected under § 103(a) as unpatentable over
Loeb ‘970 and Loeb ‘617 (US 5,601,617; iss. Feb. 11, 1997).
ANALYSIS
Claims 1, 3-6, 8, 9, 14-19, and 35 anticipated by Loeb ‘970
Appellant argues claims 1, 3-6, 8, and 9; claims 14-19; and claim 35
as separate groups. App. Br. 7-12. We select claims 1, 14, and 35 as
representative. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Appeal 2011-001490
Application 11/192,014

3
Claims 1, 3-6, 8, and 9
The Examiner found that Loeb ‘970 discloses the transmitting and
instruction step at column 11, lines 59-67. Ans. 3. The Examiner also found
that Loeb ‘970 discloses electrical coupling of at least two of a plurality of
electrodes and simultaneous delivery of a stimulation signal from a single
current source. Ans. 3-4 (citing Figs. 4B and 10A and related text). The
Examiner found that Loeb ‘970 discloses that Figures 4A-4F show some of
the electrode groupings that may be used to control distribution of electrical
stimulation in the conductive media for the array shown in Figure 3, which
consists of independently controllable contacts A-D or N individual contacts
each connected to individual leads to provide electrical stimulation of the
media through selected groupings of the electrodes through control of the
electrode control circuit. Ans. 9 (citing col. 3, ll. 31-37 and 54-62; col. 11,
ll. 32-46). The Examiner reasoned that the connection between electrodes A
and B cannot be fixed and unchanging because the electrode control unit
selectively groups independent contacts A and B to obtain the configuration
shown in Figure 4B and other configurations, some of which are illustrated
in Figures 4A and 4C-4H so the electrodes are individually selectable
through the electrode control circuit. Ans. 9-10. The Examiner also found
that Loeb ‘970 discloses that electrodes A and B are connected together in
an electrical manner rather than mechanically and unchanging. Ans. 10
(citing col. 7, ll. 25-31 and 49-51). The Examiner found that the ability of
electrode control circuit 118 to selectively connect at least five separate
electrodes to a power source to produce a wide variety of electrode

Appeal 2011-001490
Application 11/192,014

4
configurations in Figures 4A-4H indicates that the electrodes are electrically
coupled to allow the electric near field 114 to be steered to desired locations.
Ans. 11 (citing col. 8, ll. 14-29).
Appellant argues that Figure 4B of Loeb ‘970 discloses two electrodes
A and B that are connected together by a physical connection between the
leads to the electrodes rather than an electrical coupling of the electrodes
based on an instruction received after implantation of the device because
electrodes A and B are connected by a physical connection between the
leads to the electrodes as shown in Figures 4B and 10A rather than a switch
or other device that can modify the connections between the two electrodes.
App. Br. 8-9. We agree with the Examiner that Loeb ‘970 electrically
couples electrodes through a switching mechanism (switching matrix 56)
that selectively couples electrodes of a plurality of electrodes to control the
positioning of a near field 114 within a conductive media and selectively
move the location where the stimulation occurs and we adopt the Examiner’s
findings as set forth at pages 3-4, 7-15, and 17-19 of the Answer as our own.
Appellant also argues that Figure 8 of Loeb ‘970 simply discloses an
embodiment in which stimulation is applied to a single electrode of a group
of N stimulation electrodes and does not disclose electrical coupling of at
least two electrodes based on an instruction transmitted to a medical device.
App. Br. 11. This argument is not persuasive because Loeb ‘970 discloses
that signals are received and processed into data signals 49 that are sent to a
control system 50 to control a switching matrix 56 that electrically connects
stimulation electrodes 14 to produce various stimulation patterns as shown
in Figure 8. Col. 11, l. 48 to col. 12, l. 21; see also Figs. 4A-4H. Appellant
does not point to any express definition of “instruction” in the Specification
Appeal 2011-001490
Application 11/192,014

5
that distinguishes over Loeb ‘970. We agree with the Examiner that Loeb
‘970 receives and processes transmitted instructions as data signals that
specify which of the N electrodes to couple for stimulation and we adopt the
Examiner’s findings as set forth at pages 15-16 and 20-23 of the Answer.2
We sustain the rejection of claims 1, 3-6, 8, and 9.
Claims 14-19 and 35
Appellant argues that claim 14 recites in part “disposing a plurality of
tissue-stimulating electrodes in a physical arrangement on or in the recipient;
and adjusting a geometry of the plurality of electrodes without replacing or
altering the physical arrangement of the plurality of electrodes,” and Loeb
970 does not anticipate or render obvious this limitation for at least similar
reasons to those discussed above for claim 1. App. Br. 12. Appellant also
argues that claim 35 recites in part “means for transmitting an instruction to
the medical device after implantation of the medical device in a recipient; ...
means for electrically coupling a first set of at least two of the plurality of
electrodes based on the instruction ....,” and claim 35 is in condition for
allowance for at least similar reasons to those discussed for claim 1. App.
Br. 13. These arguments are not persuasive for the reasons discussed supra
for claim 1 and do not persuade us of error in the Examiner’s findings and
determination. We sustain the rejection of claims 14-19 and 35.

2 Appellant discloses that audio signals are received and processed for use in
applying stimulus via an electrode array 142 by selecting electrode(s) to be
used, the timing, mode of stimulation and amplitude. Spec., paras. [0040]-
[0041], [0043]-[0044]. Appellant also discloses the use of a switching
circuit (output switch matrix 308) that provides direct leads from switches
304, 306 to electrodes 202A-202N. Spec., paras. [0048]-[0052]; Fig. 3.
Appeal 2011-001490
Application 11/192,014

6
Rejections of claims 7, 10-13, 20, and 21 under 35 U.S.C. § 103(a)
Appellant argues that the rejections of claims 7, 10-13, 20, and 21 as
unpatentable over Loeb ‘970, Loeb ‘970 and Overstreet, Loeb ‘970, Blamey,
and Overstreet, and Loeb ‘970 and Loeb ‘617 are improper because these
claims depend from one of claims 1, 14, and 35. App. Br. 13-14. These
arguments are not persuasive for the reasons set forth supra for claims 1, 14,
and 35. We sustain the rejection of claims 7, 10-13, 20, and 21.
DECISION
We AFFIRM the rejections of claims 1, 3-21, and 35.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

ELD