Ex Parte Guzman et al

Board of Patent Appeals and Interferences

Jan 9, 2012

11191740 (B.P.A.I. Jan. 9, 2012)

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.
11/191,740 07/28/2005 Albert W. Guzman 2113.0014/1000.081 8005
41332 7590 01/09/2012
CYBERONICS, INC.
LEGAL DEPARTMENT, 6TH FLOOR
100 CYBERONICS BOULEVARD
HOUSTON, TX 77058
EXAMINER
MANUEL, GEORGE C
ART UNIT PAPER NUMBER
3762
MAIL DATE DELIVERY MODE
01/09/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALBERT W. GUZMAN, STEVEN E. MASCHINO,
STEVEN M. PARNIS, and WILLIAM R. BURAS
____________

Appeal 2010-008913
Application 11/191,740
Technology Center 3700
____________

Before DONALD E. ADAMS, STEPHEN WALSH, and ERICA A.
FRANKLIN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 1-22. We have
jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a method of treating a patient having a
pancreatic disorder. The claims are not separately argued. Claim 1 is
representative and is reproduced in the “CLAIMS APPENDIX” of
Appellants‟ Brief (App. Br. 13).
Appeal 2010-008913
Application 11/191,740

2
Claims 1-22 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Yun
1
and Wernicke.
2

We affirm.

ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?

FACTUAL FINDINGS (FF)
FF 1. Appellants disclose that “[e]mbodiments of the present invention
provide for an electrical stimulation for a portion of an autonomic nerve to
treat a disorder associated with the pancreas . . . such as hypoglycemic
conditions, hyperglycemic conditions, and/or other diabetic or pancreatic-
related disorders” (Spec. 10: 9-12).
FF 2. Yun suggests a method of treating diabetes by electrically
modulating “[b]ranches of the autonomic nervous system that . . . include
parasympathetic nerve and ganglia such as, but not limited to one or more of
the . . . vagus nerve . . . [and] celiac plexus” (Yun 18: ¶ [0138], Abstract, and
Title; see also Yun 22: claim 10 (condition to be treated is “diabetes”); Ans.
3; and App. Br. 6-7).
FF 3. Wernicke suggests a method for treating diabetes by applying
electrical stimulation to the vagus nerve of a patient (Wernicke, Abstract;
Ans. 6).

1
Yun et al., US 2004/0249416 A1, published December 9, 2004.
2
Wernicke et al., US 5,231,988, issued August 3, 1993.
Appeal 2010-008913
Application 11/191,740

3
ANALYSIS
Appellants contend that “Yun is devoid of any disclosure that could
give rise to a reasonable expectation of success at treating a pancreatic
disorder by modulating neural structures not in or around the heart, carotid
artery, and aorta” (App. Br. 6 (emphasis removed); Reply Br. 6). We are not
persuaded (see FF 2).
Appellants contend that Yun‟s disclosure is not enabled because “it
uses the word „may‟ in the context that modulating the celiac plexus may be
used to treat various diseases” (App. Br. 7 and 8). We are not persuaded
(see FF 2). We are also not persuaded by the unsupported statement of
Appellants‟ representative that Yun‟s disclosure is not enabled because it
discloses the treatment of diseases that a person of ordinary skill in this art
would find “highly unlikely” to “be treatable by modulating any nervous
structure, let alone the celiac plexus” (App. Br. 7; Reply Br. 7; Cf. FF 2 and
3). See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney‟s
argument in a brief cannot take the place of evidence”).
Wernicke supports Yun‟s method of treating diabetes by electrically
modulating a branch of the autonomic nervous system, e.g., the vagus nerve
and/or celiac plexus (FF 2-3). Therefore, we are not persuaded by
Appellants‟ contention that a “person of ordinary skill in the art would fail to
find, in light of Wernicke, any reasonable expectation of success at treating a
pancreatic disorder by stimulating a neural structure recited by the present
claim[ 1]” (App. Br. 9 (emphasis removed)).
Appeal 2010-008913
Application 11/191,740

4
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 1 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Yun and Wernicke is affirmed.
Because they are not separately argued claims 2-22 fall together with claim
1. 37 C.F.R. § 41.37(c)(1)(vii).

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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