Ex Parte HONERT

Patent Trial and Appeal Board

Aug 22, 2016

12979676 (P.T.A.B. Aug. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/979,676 12/28/2010
110239 7590 08/24/2016
Edell Shapiro & Finnan LLC
9801 Washingtonian Blvd., Suite 750
Gaithersburg, MD 20878
FIRST NAMED INVENTOR
Christopher van den HONERT
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.
3065.0143DIV 3435
EXAMINER
FAIRCHILD, MALLIKA DIPAYAN
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
08/24/2016 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):
epatent@usiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER VAN DEN HONERT
Appeal2014-008693
Application 12/979,6761
Technology Center 3700
Before JOHN C. KERINS, STEP AN ST AI CO VICI, and LEE L. STEPINA,
Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Christopher van den Honert (Appellant) appeals under 35 U.S.C.
§ 134(a) from the Examiner's final decision rejecting claims 1-22. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We REVERSE.
According to Appellant, the real party in interest is Cochlear Limited.
Appeal Br. 4 (filed March 4, 2014).
Appeal2014-008693
Application 12/979,676
INVENTION
Appellant's invention relates "to focused stimulation in a medical
stimulation device." Spec. i-f 1.
Claims 1 and 12 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A cochlear implant having an electrode array including a
plurality of electrodes forming electrode channels, the electrode
array being configured to be implanted in a particular recipient's
cochlea,
wherein said implant is configured to provide stimulation
of one or more discrete stimulation regions of the particular
recipient's cochlea via application of one or more stimulating
signals and one or more limiting signals simultaneously applied
via the electrode channels, such that the one or more
stimulating signals and the one or more limiting signals
interfere with one another, wherein the one or more limiting
signals have an opposite polarity as the one or more stimulating
signals, the interference defining said one or more discrete
stimulation regions; and
wherein the cochlear implant is configured such that said
one or more stimulating signals and said one or more limiting
signals are based upon transimpedance measurements among
electrode channels of the cochlear implant as implanted in the
particular recipient, said transimpedance measurements
representing specific current spread functions of the particular
recipient.
THE REJECTIONS
The following rejections are before us for review:
I. Claims 1-3, 6, 8-10, 12-14, 17-19, 21, and 22 are rejected under 35
U.S.C. §103(a) as being unpatentable over Rodenhiser (A Methodfor
Determining the Driving Currents for Focused Stimulation in the
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Application 12/979,676
Cochlea, IEEE Transactions on Biomedical Engineering, Vol. 42, No.
4, Apr. 1995) and van den Honert (US 4,856,525, iss. Aug. 15, 1989).
II. Claims 4 and 15 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Rodenhiser, van den Honert, and Cohen (US
7,184,843 Bl, iss. Feb. 27, 2007).
III. Claims 5, 7, and 16 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Rodenhiser, van den Honert, and Maltan (US
6,249,704 Bl, iss. June 19, 2001).
IV. Claims 11 and 20 are rejected under 3 5 U.S. C. § 103 (a) as being
unpatentable over Rodenhiser, van den Honert, and Eder (WO
2004/021885 Al, pub. Mar. 18, 2004)2.
ANALYSIS
Rejection I
Each of independent claims 1 and 12 recites, in part, "wherein the one
or more limiting signals have an opposite polarity as the one or more
stimulating signals." Appeal Br. 24, 26 (Claims App.).
The Examiner finds that Rodenhiser discloses most of the limitations
of independent claims 1 and 12 including "application of one or more
stimulating signals and one or more limiting signals simultaneously such
that the one or more stimulating and one or more limiting signals interfere
with one another," but does not disclose "the stimulation and limiting signal
2 Although in this rejection the Examiner does not refer to van den
Honert explicitly, because claims 11 and 20 depend from claims 1 and 12,
respectively, we consider the omission of van den Honert a clerical error.
See Final Act. 3.
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Application 12/979,676
are of opposite polarity." Final Act. 2-3 (citing Rodenhiser, p. 337, left col.,
11. 10-24, right col., 11. 5-34; p. 338, left col., 11. 17--45; p. 340, Table 1; and
page 341 ). The Examiner relies on van den Honert as disclosing the use of
"opposite polarity signals in a multi-signal cochlear stimulation system." Id.
at 3 (citing van den Honert, Abstract). The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art "to modify
the system as taught by Rodenhiser with making the stimulation and limiting
signals opposite in polarity since such a modification would provide the
predictable result of facilitating field isolation of the stimulation signal
between discrete regions; i.e. focusing the stimulation to the appropriate
regions." Id.
Appellant argues that van den Honert discloses a multichannel
electrical stimulator with improved channel isolation that uses "a bipolar
electrode array using complementary source and sink electrodes designed
specifically to reduce interaction between nearby stimulation channels."
Appeal Br. 18-19 (citing van den Honert, col. 1, 11. 50-54 and col. 2, 11. 43-
51 ). Appellant asserts that Rodenhiser, by contrast, "discloses a virtual
model with 'monopole current sources of a five-electrode array,' thus
signifying that each electrode discussed in Rodenhiser is a unique electrode
channel," and that "Rodenhiser intentionally relies on interference between
virtually modeled electrode channels to try and obtain improved operation of
electrical stimulators." Id. (citing Rodenhiser, p. 338, left col., second full
paragraph (stating that "[a]ll electrodes are driven simultaneously, taking
advantage of the additive, or subtractive, nature of the potential distributions
from each electrode source.")). Appellant thus contends that there is no
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Application 12/979,676
reason to combine the teachings of the references because the "references
appear to be at odds with one another," and that "[w]ithout the benefit of the
hindsight brought by knowledge of the instant application, one of ordinary
skill in the art would not have combined the channel isolation teachings of
Honert ['525] with the channel interference teachings of Rodenhiser." Id.
In the Answer, the Examiner responds that "[van den] Honert's
teaching of isolation through use of opposite polarities [] provide[ s] a clear
teaching of a means for controlling discreet stimulation field locations," and
thus, when these teachings are "combined with Rodenhiser' s interference
method, the use of opposite polarities would allow for controlling of the
stimulating and limiting fields to be properly controlled in order to ensure
the desired interference pattern is achieved." Ans. 4.
We agree with Appellant that it would not have been obvious to
modify Rodenhiser to use opposite polarities to control stimulation, as taught
by van den Honert, because Rodenhiser teaches away from such control. "A
reference may be said to teach away when a person of ordinary skill, upon
[examining] the reference, would be discouraged from following the path set
out in the reference, or would be led in a direction divergent from the path
that was taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994). In this case, Rodenhiser discloses that "[i]nstead of using a bipolar
arrangement we use the entire five-electrode array to generate the specific
stimulation," because "it is desirable not only to focus the stimulation but
also to develop specific or unique stimulation patterns for individuals."
Rodenhiser, p.338, left col., 11. 35--40. Moreover, as Appellant points out,
Rodenhiser discloses "[a]ll electrodes are driven simultaneously, taking
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Application 12/979,676
advantage of the additive, or subtractive, nature of the potential distributions
from each electrode source," and that such action of amplitude and phase
interaction (interference) "generates the desired, more localized, potential
distribution along the modeled organ of Corti and focuses the electric fields
to the area surrounding the electrodes, allowing stimulation of a specific
group of nerve cells." Id. at p. 338, left col., 11. 25-32; see also Appeal Br.
17-19. In contrast, van den Honert discloses a bipolar arrangement where
signal interaction is minimized to improve channel isolation. See van den
Honert, col. 2, 11. 43-51. As such, Rodenhiser is familiar with a bipolar
arrangement, but takes a different approach to focus the electric fields to the
area surrounding the electrodes for stimulation of a specific group of nerve
cells, namely, using a five-electrode array that relies on phase and amplitude
interference, rather than minimizing signal interaction (interference), as
taught by van den Honert. Accordingly, the modification proposed by the
Examiner to modify Rodenhiser's cochlear implant to include van den
Honert's "opposite polarity signals" to control stimulation would not have
been obvious to the person of ordinary skill in the art.
Hence, for the foregoing reason, we do not sustain the rejection under
35 USC§ 103(a) of claims 1-3, 6, 8-10, 12-14, 17-19, 21, and 22, as being
unpatentable over Rodenhiser and van den Honert.
Rejections II-IV
With respect to these rejections, the Examiner's use of the disclosures
of Cohen, Maltan, and Eder does not remedy the deficiencies of the rejection
based upon Rodenhiser and van den Honert as described supra. See Final
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Act. 4--7. Accordingly, for the same reasons discussed above, we also do
not sustain the rejections under 35 U.S.C. §103(a) of claims 4 and 15 as
unpatentable over Rodenhiser, van den Honert, and Cohen; of claims 5, 7,
and 16 as unpatentable over Rodenhiser, van den Honert, and Maltan; and of
claims 11 and 20 as unpatentable over Rodenhiser, van den Honert, and
Eder.
DECISION
The decision of the Examiner to reject claims 1-22 is reversed.
REVERSED
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