Ex Parte Kothandaraman et al

Patent Trial and Appeal Board

Jun 29, 2016

12614942 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/614,942 11109/2009 Sridhar Kothandaraman
45458 7590 07/01/2016
SCHWEGMAN LUNDBERG & WOESSNER/BSC
POBOX2938
MINNEAPOLIS, MN 55402
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.
6279.069US 1 9550
EXAMINER
EV ANISKO, GEORGE ROBERT
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
07/01/2016 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):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SRIDHAR KOTHANDARAMAN, CARLA MANN WOODS,
KERRY BRADLEY, JAMES R. THACKER, and
SIVAKUMARKARNATI
Appeal2014-003274
Application 12/614,942 1
Technology Center 3700
Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO,
BRADLEY B. BAY AT, and, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 12-29, 85, and 86. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, "[t]he real party in interest is Boston
Scientific N euromodulation Corporation, a corporation organized under the
laws of Delaware." Appeal Br. 2.
Appeal2014-003274
Application 12/614,942
Claimed Subject Matter
Claim 12, reproduced below, is illustrative of the subject matter on
appeal.
12. A non-transitory computer readable medium for
programming a control device configured for controlling
electrical stimulation energy provided to multiple electrode leads
that are physically implanted within a patient in a side-by-side
lead configuration, the computer readable medium containing
instructions, which when executed, comprises:
providing a plurality of different lead stagger
configurations, each of which defines a longitudinal stagger
between the lead bodies of the implanted multiple electrode
leads;
selecting one of the plurality of different lead stagger
configurations;
providing a plurality of different pre-stored navigation
tables respectively corresponding to the plurality of different lead
stagger configurations, each navigation table including a series
of stimulation parameter sets;
selecting from the plurality of different navigation tables
the navigation table that corresponds to the selected lead stagger
configuration;
stepping through the stimulation parameter sets of the
selected navigation table; and
selecting at least one of the stimulation parameter sets for
programming the control device.
Rejection
Claims 12-29, 85, and 86 are rejected under 35 U.S.C. § 102(e) as
anticipated by King (US 2008/0004674 Al, pub. Jan. 3, 2008) or, in the
alternative, under 35 U.S.C. § 103(a) as unpatentable over King and Goetz
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Application 12/614,942
(US 2006/0229687 Al, pub. Oct. 12, 2006) or Mann (US 6,393,325, iss.
May 21, 2002).2
OPINION
The rejection of claims 12-16, 18-26, 28, 29, and 85 under 35 U.S.C.
§ 102(e) as anticipated by King
We adopt as our own the findings and technical analysis set forth by
the Examiner in the Answer at pages 3--4 and 6-8 and determine that the
Examiner in the Answer at pages 6-8 appropriately addressed the
Appellants' arguments within the Appeal Brief against the rejection. Most
notably, the Examiner explains:
as stated in paragraph 20 of the specification, "the electrode
leads may, in fact, have a stagger (i.e., the degree to which the
first electrode of one lead is vertically offset from the first
electrode of another lead.)" [emphasis added]. This states the
leads are staggered when the "electrode of one lead is vertically
offset from the electrode of another lead'' and not that a stagger
requires the end of one lead being offset from the end of another
lead. In addition, the appellant's claim 13 states the staggered
configurations are not staggered.
Ans. 6 (italics added); see, e.g., id. at 7 (explaining that King's second class,
having three leads, includes at least two different lead stagger
configurations.).
2 Although the Examiner sets forth separate statements for the rejections of
claims 12-16, 18-26, 28, 29, 85, and 86 and claims 17 and 27 (Final Act. 3-
6), we have consolidated these statements because the rejections of claims
12-29, 85, and 86 are based on the same grounds of rejection, i.e., as
anticipated by King or, in the alternative, as unpatentable over King and
Goetz or Mann.
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Application 12/614,942
In response to the Examiner's Answer, the Appellants contend that as
illustrated in King, the ends of the leads are not offset, and therefore, the
lead bodies are not staggered. Reply Br. 2. The Appellants contend that
although claim 12 requires the "lead stagger configurations" to comprise a
"non-staggered configuration," the most that can be implied from this is that
one of the lead stagger configurations is a non-staggered lead configuration.
Id. The Appellants contend that the lead body is not the lead itself and the
lead includes the lead body and the electrodes carried by the lead. Id. The
Appellants also contend that King does not disclose pre-stored navigation
tables that correspond to the teachings of lead configurations in King's
paragraphs 85 or 115. Id. at 3--4.
In response to the Appellants' contentions, we agree with the
Examiner that "[ w ]hile the claim states it's a longitudinal stagger between
'lead bodies', a lead body is just the body of the entire lead (i.e. the lead
itself)." Ans. 6. Because we agree with the Examiner's findings regarding
the "lead stagger configurations," we also agree that King teaches pre-stored
navigation tables that correspond to the teachings of staggered lead
configurations.
For the foregoing reasons, the Examiner's rejection of claims 12-16,
18-26, 28, 29, and 85 as anticipated by King is sustained.
The rejection of claims 12-16, 18-26, 28, 29, and 85, in the alternative,
under 35 U.S.C. § 103(a) as unpatentable over King and Goetz or Mann
We adopt as our own the findings and technical analysis set forth by
the Examiner in the Answer at pages 3-5 and 8-9 and determine that the
Examiner in the Answer at pages 8-9 appropriately addressed the
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Application 12/614,942
Appellants' arguments within the Appeal Brief against the rejection. Also,
we concur with the legal conclusions reached by the Examiner that the
combined teachings of King and Goetz or Mann, and the Examiner's
articulated technical reasons for the proposed modifications to King's
system render obvious the claimed subject matter on appeal.
In response to the Examiner's Answer, the Appellants contend that
Goetz and Mann disclose or suggest that different lead stagger
configurations can be compensated for manually. Reply Br. 4--5. In
response, we note that the Examiner found that Goetz discloses that different
leads can be staggered, and are selected and tested to find the most
efficacious electrode combination by use of user interfaces, such as 250 and
252, that configure a programmer, such as programmer 11. See Ans. 8
(citing Goetz, para. 171 ).
For the foregoing reasons, the Examiner's rejection of claims 12-16,
18-26, 28, 29, and 85, in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over King and Goetz or Mann.
The rejections of claim 86 under 35 U.S. C. § 102(e) as anticipated by King
or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable over King
and Goetz or Mann
We adopt as our own the findings and technical analysis set forth by
the Examiner in the Answer at pages 3-5 and 9 and determine that the
Examiner in the Answer at page 9 appropriately addressed the Appellants'
arguments within the Appeal Brief against the rejection.
In response to the Examiner's Answer, the Appellants contend that
"claim 86, by virtue of claim 12, requires the leads with the same electrode
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Application 12/614,942
spacings as being the leads with different lead stagger configuration." Reply
Br. 5. However, we agree with the Examiner's findings in the Answer that
Figures 7-9 of King (three lead arrangement, with outside leads having
identical electrodes and spacings) show multiple leads with an equal number
of electrodes and identical spacings. Ans. 9. Also, as found by the
Examiner, King discloses "in paragraph 115 that any one of the leads may
be moved up or down (staggered) compared to the other lead(s), and that the
different electrode combinations described in the disclosure are selected to
be tested (e.g. paragraph 121)." Id. at 7; see also id. at 8-9 (citing Goetz,
Fig. 18, para 171; Mann, Figs. 14, 15). In such a case, the first electrode of
one lead is vertically offset from the first electrode of another lead.
For the foregoing reasons, the Examiner's rejections of claim 86 as
anticipated by King and, in the alternative, as unpatentable over King and
Goetz or Mann are is sustained.
Claims 17 and 27 are rejected under 35 U.S.C. § 103(a) as unpatentable
over King or, in the alternative, King and Goetz or Mann
The Appellants do not provide further arguments for the rejections of
claims 17 and 27. Thus, the Examiner's rejections of claims 17 and 27 are
sustained.
DECISION
We AFFIRM the Examiner's decision rejecting claims 12-29, 85, and
86.
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Application 12/614,942
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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