Ex Parte Foster et al

Patent Trial and Appeal Board

Dec 14, 2015

11393565 (P.T.A.B. Dec. 14, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111393,565 0312912006
50638 7590 12/15/2015
Boston Scientific Neuromodulation Corp.
c/o Lowe Graham Jones
701 Fifth Avenue
Suite 4800
Seattle, WA 98104
FIRST NAMED INVENTOR
Allison M. Foster
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-1-424.2 7705
EXAMINER
D ABREU, MICHAEL JOSEPH
ART UNIT PAPER NUMBER
3762
MAILDATE DELIVERY MODE
12/15/2015 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 ALLISON M. FOSTER, RAFAEL CARBUNARU,
KRISTEN N. JAAX, and TODD K. WHITEHURST
Appeal2013-008915
Application 11/393,565 1
Technology Center 3700
Before PHILIP J. HOFFMANN, KENNETH G. SCHOPPER, and
AMEE A. SHAH, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of treating a medical condition. The Examiner rejected the claims as
anticipated. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Background
The Specification discloses:
Methods of treating a medical condition include applying
at least one stimulus to a stimulation site within the brain of a
1 According to Appellants, the real party in interest is Boston Scientific
Neuromodulation Corporation. App. Br. 2.
Appeal2013-008915
Application 11/393,565
patient with an implanted stimulator in accordance with one or
more stimulation parameters. The at least one stimulus is
configured to promote neural remodeling within the brain of the
patient.
Spec. i-f 6. In particular, the Specification describes using stimulation to
induce neural dedifferentiation, i.e. to induce neurons to break synaptic
contacts and revert to a more juvenile phenotype. Id. at i-f 96.
The Claims
Claims 1-3, 7, 8, 10, and 23-25 are on appeal. Claim 1 is the only
independent claim and reads as follows.
1. A method of treating a medical condition of a patient,
said method comprising:
generating an electrical stimulus in accordance with one
or more stimulation parameters; and
applying said electrical stimulus to a stimulation site of a
brain of said patient to decrease the relative excitement between
neurons that are the source of said medical condition and neural
tissue surrounding said neurons; thereby inducing said neurons
to break synaptic contacts and revert to a juvenile phenotype.
App. Br. 13 (emphasis added).
The Rejection
The Examiner maintains that claims 1-3, 7, 8, 10, and 23-25 are
anticipated under 35 U.S.C. § 102(b) by Gliner. 2
DISCUSSION
With respect to claim 1, the Examiner finds that Gliner teaches a
method of treating a medical condition including generating an electrical
stimulus and applying the stimulation to a site in the brain to decrease the
2 Gliner et al., US 2003/0088274 Al, pub. May 8, 2003.
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Appeal2013-008915
Application 11/393,565
relative excitement between neurons that are the source of the medical
condition. Final Act. 2 (citing Gliner i-fi-185, 86, 105, 107, 108). With
respect to the claim requirement of "inducing said neurons to break synaptic
contacts and revert to a juvenile phenotype[,]" the Examiner finds:
[T]he examiner is of the position that Gliner performs the same
pulsed neural stimulation as the applicant at a preferred
frequency over 100 Hz - (i-f [107] - between 2-200Hz) - as the
applicants disclosure requires that a frequency greater than 100
Hz is required to decrease excitement of neural tissue, which
facilitates [ d]edifferentiation - see applicants specification i1
[52]), while Gliner also induces neurons to break synaptic
contacts and revert to a juvenile phenotype with stimulation
under 100 Hz (i-f [ 115] - as the applicant has sets forth in the
specification i1 [52] that neural remodeling occurs at a
frequency less than 100 Hz, which induces neural
[ r ]edifferentiation). It is noted that the applicant has not set
forth any other elements or stimulation critical to performing
this synaptic break and accordingly the claimed limitations are
met.
Id. at 2-3.
Appellants argue, inter alia, that the Examiner has not established that
Gliner explicitly or inherently discloses the claimed feature inducing
neurons to break synaptic contacts and revert to a juvenile phenotype. See
App. Br. 4.
We agree with Appellants' argument, and we determine that the
Examiner has failed to establish that Gliner discloses a method that
necessarily results in dedifferentiation of neurons as required by claim 1.
We find that the Examiner's rationale essentially limits the claim to
requiring only providing stimulation at "a relatively high frequency" above
100 Hz, which the Examiner finds will necessarily induce dedifferentiation
of the neurons. However, the portion of the Specification identified by the
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Appeal2013-008915
Application 11/393,565
Examiner states only that a relatively high frequency may be used to
"decrease excitement of neural tissue to assist in dedifferentiation." Spec. i-f
52 (as amended on Apr. 6, 2010) (emphasis added). It is not clear from this
paragraph, or from anything else in the record, that high frequency is the
only parameter required to induce dedifferentiation. See also Spec. i-f 69
(indicating that strength and duration of stimulation are other parameters that
may be pertinent to inducing dedifferentiation). Thus, we agree with
Appellants that because "Gliner discloses a frequency range that happens to
include frequencies [that] are disclosed in Appellant[ s'] specification as
being preferred to produce the claimed result of 'inducing said neurons to
break synaptic contacts and revert to a juvenile,' does not mean that Gliner
discloses the claim element at issue." App. Br. 4. Accordingly, we
determine that the Examiner failed to set forth a prima facie showing of
anticipation, and thus, we do not sustain the rejection of claim 1. We also do
not sustain the rejection of claims 2-3, 7, 8, 10, and 23-25 depending from
claim 1.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1-3,
7, 8, 10, and 23-25.
REVERSED
em
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