11338375 (B.P.A.I. Jul. 23, 2012)

Ex Parte Kollatschny

Board of Patent Appeals and InterferencesJul 23, 2012

11338375 (B.P.A.I. Jul. 23, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/338,375 01/24/2006 Shawn D. Kollatschny 1000.105 6362 41332 7590 07/24/2012 CYBERONICS, INC. LEGAL DEPARTMENT, 6TH FLOOR 100 CYBERONICS BOULEVARD HOUSTON, TX 77058 EXAMINER LAVERT, NICOLE F ART UNIT PAPER NUMBER 3762 MAIL DATE DELIVERY MODE 07/24/2012 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 SHAWN D. KOLLATSCHNY __________ Appeal 2011-002677 Application 11/338,375 Technology Center 1600 __________ Before DONALD E. ADAMS, DEMETRA J. MILLS, and JEFFREY N. FREDMAN MILLS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134. The Examiner has rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2011-002677 Application 11/338,375 2 Background 1. An electrode assembly for an implantable medical device, comprising: a spine; and a plurality of electrodes protruding from the spine, wherein at least two electrodes protrude from the spine in opposing directions and define a nerve receiving channel; wherein, when said electrode assembly is not coupled to a nerve and said electrodes are in a relaxed state position, said nerve receiving channel comprises a cross-sectional area that is substantially less than a cross- sectional area of a nerve to which the electrode assembly is adapted to be coupled; wherein, when coupled to said nerve, each electrode wraps around and directly contacts at least 60% of the circumference of the nerve; and wherein said plurality of electrodes comprises at least three electrodes and at least two electrodes adjacent one another along the spine protrude from the spine in a common direction. Cited References Baker, Jr. US 5,215,089 Jun. 1, 1993 Weinberg US 5,351,394 Oct. 4, 1994 McCreery US 2004/0111139 A1 Jun. 10, 2004 Meier et al. US 6, 292,703 B1 Sep. 18, 2011 “adjacent” Merriam-Webster.com www.merriamwebster.com Grounds of Rejection Claims 1-3,5-8 & 10-16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Meier et al. in view of Baker, Jr., Weinberg and McCreery. Appeal 2011-002677 Application 11/338,375 3 FINDINGS OF FACT The Examiner’s findings of fact are set forth in the Answer at pages 3- 6. Discussion ISSUE The Examiner finds that Meier teaches an electrode assembly for a medical device. The Examiner relies on Baker which teaches that it is known to use a nerve electrode array (e.g., element 10) comprising extending legs (e.g., elements 12-13 & 15), wherein at least two legs (e.g., elements 12 & 13) are adjacent to one another along a common wire. (Ans. 4.) Weinberg teaches that it is known to use an electrode array that has individual bands connected or linked by an electrically insulative spline or backbone along the length, in which the electrode array has to be gently spread open to be placed around a nerve during surgical implantation of the electrode. (Ans. 5.) McCreery teaches that it is known to use an electrode assembly for implantation on a peripheral nerve having varied outside side diameters between 1.0 to 7.0 mm, which establishes the inside diameters of the helical electrodes. The Examiner concludes that It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the electrode assembly as taught by Meier et al. with the use of the nerve electrode array having at least two adjacent electrodes protruding in a common direction as taught by Baker, Jr., the resilient electrode array as taught by Weinberg and the varied lesser cross-sectional areas of said nerve as taught by McCreery et al., since such a modification would provide Appeal 2011-002677 Application 11/338,375 4 the electrode assembly for an implantable medical device having a nerve receiving channel with a varying cross-sectional, which when the electrode is in a relaxed configuration the nerve receiving channel has varied, lesser cross-sectional areas as compared to the cross- sectional area of said nerve in order to provide predictable results pertaining to utilizing an electrode array which is easier to install by virtue of utilizing at least two adjacent electrodes protruding in a common direction [e.g., Baker, Jr. (col 3, ln 1-17)], placing a nerve electrode array properly over a nerve and then allow the array to collapse, as a consequence of its resiliency, into an unrestrained normal configuration [e.g., Weinberg, (col 1, ln 46-55) & (Fig 1, 10)] and to a close or very gentle compressive fit on the nerve to be stimulated [e.g., McCreery, 0148]. (Ans. 5-6.) Appellant argues that “None of the art teaches or suggests adjacent electrodes protruding from the spine in the same direction.” (Br. 11.) Appellant argues in the footnote on page 12 of the Brief that, “Appellant does not strictly limit the definition of the term ‘adjacent’ to mean ‘next in space or position.’ The term ‘adjacent’ may be assigned other, similar meanings that are consistent with the specification and drawings.” The issue is: Does the cited prior art teach an electrode assembly where “at least two electrodes adjacent one another along the spine protrude from the spine in a common direction”, as claimed? PRINCIPLES OF LAW “In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. Only if that burden is met, does the burden of coming forward with evidence or argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citations omitted). In order to determine whether a prima facie Appeal 2011-002677 Application 11/338,375 5 case of obviousness has been established, we consider the factors set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the relevant art; and (4) objective evidence of nonobviousness, if present. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). During ex parte prosecution, claims are to be given their broadest reasonable interpretation consistent with the description of the invention in the specification. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). “Without evidence in the patent specification of an express intent to impart a novel meaning to a claim term, the term takes on its ordinary meaning.” Optical Disc Corp. v. Del Mar Avionics, 208 F.3d 1324, 1334 (Fed. Cir. 2000). ANALYSIS We agree with the Examiner’s fact finding with respect to the Baker reference, the statement of the rejection and responses to Appellant’s arguments as set forth in the Answer. We find that the Examiner has provided evidence to support a prima facie case of obviousness. We provide the following additional comments for emphasis. We interpret the term “adjacent” consistent with the Examiner’s definition in the record from www.merriamwebster.com. An electrode is a conductor used to establish electrical contact with a nonmetallic part of a circuit. Appeal 2011-002677 Application 11/338,375 6 Figure 2 of Baker is reproduced below. Baker, Fig. 2 illustrates the dual claw bipolar electrode array or assembly installed over a nerve 32. No conductive foil is secured to or embedded as an electrode portion to the underside of spline 27 but the electrical lead portion 33 is conveniently carried on or secured adjacent to the spline, with the overall lead 35 having conductive filaments connected to the respective electrode foil portions of the two claws. (Col. 4, l. 58-65.) We agree with the Examiner that one of ordinary skill in the art would have considered Baker’s legs (10) on each side of nerve (32) to be adjacent electrode means that protrude in common directions. (Ans. 6.) That is, the legs are themselves electrodes, since they conduct electricity to the targeted portion of the spine, and two of the three legs of Baker are shown to protrude in a common direction. Thus, we are not persuaded by Appellant’s argument that none of the art teaches or suggests adjacent electrodes protruding from the spine in the same direction. (Br. 11.) The obviousness rejection is affirmed for the reasons of record. Appeal 2011-002677 Application 11/338,375 7 CONCLUSION OF LAW The cited references support the Examiner’s obviousness rejection. 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 dm