Ex Parte Giuffrida et al

Patent Trial and Appeal Board

Oct 7, 2016

13153063 (P.T.A.B. Oct. 7, 2016)

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.
13/153,063 06/03/2011 Joseph P. Giuffrida GLN-002 8223
14783 7590 10/07/2016
Great Lakes NeuroTechnologies Inc.
4415 Euclid Ave. Ste. 500
Cleveland, OH 44103
EXAMINER
SOREY, ROBERT A
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
10/07/2016 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 JOSEPH P. GIUFFRIDA, DUSTIN A. HELDMAN, and
THOMAS O. MERA1
____________________

Appeal 2014-005677
Application 13/153,063
Technology Center 3600
____________________

Before JOSEPH A. FISCHETTI, ROBERT L. KINDER, and
CARL L. SILVERMAN, Administrative Patent Judges.

KINDER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of our Decision entered May 20, 2016, in
which we affirmed the Examiner’s rejection of claims 1, 2, 4–16, and 192
(Request for Rehearing filed July 14, 2016, hereinafter “Req. Reh’g”).
Because Appellants’ arguments do not persuade us that we misapprehended
or overlooked any points that would justify a different outcome, we deny
Appellants’ request to modify our Decision.

1 The Appellants identify Great Lakes NeuroTechnologies Inc. as the real
party in interest. App. Br. 2.
2 We reversed the Examiner’s final rejection of claims 3, 17, 18, and 20.
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A request for rehearing must state with particularity the points of law
or fact believed to have been misapprehended or overlooked by the Board,
and must comply with 37 C.F.R. § 41.52(a)(1).
Appellants first contend “the Board erred in finding that Firlik
teaches3 steps and devices for measuring and quantifying motor symptoms
of a subject’s movement disorder.” Req. Reh’g 2. More specifically,
Appellants contend that a distinction exists between general body motion,
admittedly measured by Firlik, and symptomatic movement, allegedly not
measured by Firlik. Id. Appellants “point out that even though symptomatic
movement may be a component of general movement or body motion,
measurement of general body motion does not lead to a specific
measurement of symptomatic movement.” Id. According to Appellants, we
did not properly consider that “additional steps not taught by Firlik are
required to actually measure and quantify movement disorder symptoms.”
Id. at 3. Further, Appellants contend although Firlik discloses measuring
patient performance, “patient performance is not a metric that necessarily
includes motor symptoms.” Id.
Appellants’ contentions fail to identify any points of law or fact
believed to have been misapprehended or overlooked by the Board. As
explained in our Decision, claim 1 requires a sensor “to measure at least one
motor symptom of a subject’s movement disorder” (App. Br. 53, Claims
App’x) and measurement of a movement disorder is broadly described in the
Specification as measuring movement. See Dec. 3–7. We agreed with the

3 Because the Examiner’s rejection of claim 1 was based on anticipation by
Firlik (Ans. 3), we affirmed the Examiner’s finding that Firlik discloses each
limitation.
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Examiner that Firlik discloses measurement of motor symptoms through
measurement of body motion. Id. at 3–4.
As we previously explained, Firlik also discloses measurement of
patient performance, which includes motor symptoms, for the specific
purpose of treatment of movement disorders related to Parkinson's disease.
Id. at 4; see also Firlik ¶ 63 (“patient performance information may
comprise . . . scores associated with performance evaluation tests, and/or
other information”). Indeed, the Examiner relies on paragraph 114 of Firlik
as disclosing adjusting neural stimulation parameters for treatment (Final
Act. 7), and these adjustments may be made based upon measurement of a
patient’s motor symptoms. Firlik discloses that the TMC may begin, adjust,
or discontinue neural stimulation based on the nature or extent of the
patient’s neurologic dysfunction “or measured patient functional limitations
(e.g., one or more types of fine motor control) associated with such
dysfunction.” Firlik ¶ 114; see also id. at ¶ 133. Accordingly, we have
reconsidered our Decision but still disagree with Appellants’ contentions
that Firlik fails to disclose quantifying symptoms of a subject’s movement
disorder.
Appellants also contend “[t]he Board erred in concluding that Firlik
teaches a command module as in claim 1.” Req. Reh’g 5–6. Appellants
argue “[g]iven that Firlik does not specifically address motor symptoms, it
cannot be construed as converting an analog signal into a digital signal that
specifically corresponds to at least one motor symptom. Id. at 6. Appellants
refer to claim 13’s requirement of “a command module for receiving the
analog signal acquired by the sensor unit . . . for converting the analog signal
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into a digital signal corresponding to the at least one quantified motor
symptom.” App. Br. 56, Claims App’x.
We find Appellants’ contentions fail to establish we misapprehended
or overlooked any points that would justify a different outcome and are
therefore unpersuasive for the reasons set forth above and as explained in
our Decision. See Dec. 13–14.
Regarding the Examiner’s obviousness rejection based on Firlik and
Klapper (only claim 5), Appellants contend there is not adequate motivation
to combine the references. Req. Reh’g 6. Appellants also contend that even
if Klapper teaches an output substantially predictive of the UPDRS, the
claims require the historical data comprises scores based on the UPDRS
assigned to movement disorder patients by at least one expert clinician. Id.
Appellants contend that because Klapper does not teach the UPDRS based
“scores being provided by a clinician, and therefore any historical data
cannot comprise such scores.” Id. Appellants seem to refer to the
requirements of claims 4 and 5.
Claim 4 requires “wherein the quantification of at least one motor
symptom of the subject’s movement disorder is based at least in part on
historical data,” and claim 5 requires “the historical data comprises scores
based on the Unified Parkinson’s Disease Rating Scale (UPDRS) assigned to
movement disorder patients by at least one expert clinician.” App. Br. 53–
54, Claims App’x. As claimed, the UPDRS scores represent historical
scores, or a scale, assigned to movement disorder patients, not necessarily
assigned to the “subject” of treatment for claim 1. By claiming that the
historical data is “based on” UPDRS scores, the Examiner finds “the
limitation gives no guidance as to how the assignment is performed/made or
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what the aspect of the UPDRS4 is utilized to determine the historical score.”
Ans. 10. Regardless, the Examiner finds that the combination of Firlik and
Klapper teaches the limitation because Klapper teaches determining a
“UPDRS motor score and creating an algorithm capable of predicting the
movement states of a current Parkinson’s patient based upon information
collected from prior patients.” Id. at 9–10.
As explained in our Decision, Klapper teaches that the UPDRS scale
is a more general assessment of Parkinsonism, which is of value as a means
to demonstrate how severely the patients were affected and whether the
experience with them generalizes to other patient populations. Dec. 17. We
also explained how Firlik discloses storing and retrieving diagnostic session
information and that a clinician may analyze the diagnostic session
information (or scores) in order to define or adjust treatment session
parameters. Dec. 8. Again, the claimed scores need only be “based on” the
UPDRS assigned by a clinician, and this may be satisfied by adopting a
historical UPDRS data scale such as taught by Klapper. See Dec. 7–8, 16–
18. We agree with the Examiner that the combination of Firlik and Klapper
teaches use of historical data scores “based on” the UPDRS assigned to
movement disorder patients by at least one expert clinician. Further, the
Examiner provides a rational basis for the combination, such as combining
known elements in a predictable manner to yield predictable results because,
for example, use of a second sensor would allow for collection of movement
data as expected. See Dec. 18.

4 For example, in a related appeal we noted: “The Specification suggests
that an overall UPDRS score may be assigned as well as one or more
UPDRS scores for subtests (sections) in the UPDRS assessment.” Appeal
No. 2012-006524, Decision on Request for Rehearing, 5 (Apr. 13, 2015).
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Appellants have not established that the Board misapprehended or
overlooked any point of fact or law in rendering the original decision. Based
on our consideration of the record before us, we find no error in the
Examiner’s conclusion that claims 1–4, 6–8, 10–13, 16–18 and 20 are
anticipated by Firlik; claim 5 is unpatentable over Firlik and Klapper under
35 U.S.C. § 103(a); claims 9 and 19 are unpatentable over Firlik and Sun
under 35 U.S.C. § 103(a); and claims 14 and 15 are unpatentable over Firlik
and Giftakis under 35 U.S.C. § 103(a). We therefore maintain our
affirmance of the Examiner’s rejections under 35 U.S.C. §§ 102(b) and
103(a).

DECISION
We have granted Appellants’ request to the extent that we have
reconsidered our decision entered May 20, 2016, but we deny the request
with respect to making any changes therein.
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)(v)(2009).

DENIED