Ex Parte Lane et al

Patent Trial and Appeal Board

Aug 26, 2016

12550213 (P.T.A.B. Aug. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/550,213 08/28/2009
45458 7590 08/30/2016
SCHWEGMAN LUNDBERG & WOESSNER/BSC
POBOX2938
MINNEAPOLIS, MN 55402
Courtney Lane
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.
6279.089US 1 1462
EXAMINER
PHAM, MINH DUC GIA
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
08/30/2016 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 COURTNEY LANE, RAFAEL CARBUNARU,
KERRY BRADLEY, DAVID K.L. PETERSON, ANDREW DIGIORE, and
MICHAEL MOFFITT
Appeal2014-003265
Application 12/550,213 1
Technology Center 3700
Before HUBERT C. LORIN, MICHAEL C. ASTORINO, and
ROBERT J. SILVERMAN, 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 1, 2, 6-14, and 18-26. See Notice of Appeal, filed
June 26, 2013. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to the Appellants, "[t]he real party in interest in this appeal is
Boston Scientific Neuromodulation Corporation." Appeal Br. 2.
Appeal2014-003265
Application 12/550,213
Claimed Subject Matter
Claims 1 and 13 are the only independent claims on appeal. Claims
13 and 18, reproduced below, are illustrative of the subject matter on appeal.
13. A multi-channel neurostimulation system, comprising:
a plurality of electrical terminals configured for being
respectively coupled to a plurality of electrodes;
analog output circuitry configured for delivering a
plurality of pulsed electrical waveforms respectively within a
plurality of timing channels to the electrical terminals; and
control circuitry configured for predicting sets of
stimulation pulses within the pulsed electrical waveforms that
will potentially overlap temporally, and temporally shifting
stimulation pulses in the respective pulsed electrical waveforms
in a manner that prevents overlap of the potentially overlapping
pulse sets while preventing frequency locking between the
timing channels.
18. The neurostimulation system of claim 13, wherein the
control circuitry is configured for temporally shifting stimulation
pulses in the respective pulsed electrical waveforms by
temporally shifting at least one pulse in each potentially
overlapping pulse set a random amount.
Rejections
Claims 1, 6-9, 13, 18-21, 25, and 26 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Meadows (US 6,516,227 Bl, iss. Feb. 4, 2003).
Claims 2, 10-12, 14, and 22-24 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Meadows.
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Application 12/550,213
ANALYSIS
Anticipation by Meadows
At the outset, we note that the Appellants do not provide an argument
forthe rejection of independent claims 1and13 under 35 U.S.C. § 102(b) as
anticipated by Meadows. The Appellants also do not provide an argument
for the rejection of dependent claims 9, 21, 25, and 26. Thus, we summarily
affirm the rejection of these claims.
The Appellants argue that the rejection of claims 6 and 18, which are
claims that depend from independent claims 1 and 13, respectively, is in
error because Meadows fails to disclose "temporal shifting of the stimulation
pulses in the respective pulse electrical waveforms comprise temporally
shifting at least one pulse in each potentially overlapping pulse set a random
amount." Appeal Br. 5. In support of this argument the Appellants point out
that Meadows fails to disclose that a programmer or an algorithm chooses a
random value between 1 and 64 milliseconds. See Reply Br. 2-3. The
Appellants' argument is persuasive.
The Examiner does not appear to find that Meadows explicitly
discloses "temporally shifting at least one pulse in each potentially
overlapping pulse set a random amount," as recited in claims 6 and 18.
Instead, the Examiner appears to find Meadows inherently discloses the
disputed limitation of claims 6 and 18. See Ans. 4--5.
The Examiner finds that Meadows discloses an arbitration circuit,
which includes a programmable "hold-off period" between 1 and 64
milliseconds at the end of a first phase of a pulse. Id.; see Final Act. 2-3
(citing Meadows, col. 14, 11. 13-54, col. 15, 11. 1-29, col. 34, 11. 24--54). The
Examiner also finds that "the act of selecting a Hold-off period is done by
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Application 12/550,213
choosing a random value between 1 and 64 milliseconds" and "it is well
known in the art that the selection of a random amount is in fact relying on
one or more algorithms to generate such random value." Ans. 5. The
Examiner also advises the Appellant "that where a prior art apparatus is
identical or substantially identical in structure, claimed properties or
functional characteristics are presumed to be inherent, and a prima facie case
of either anticipation or obviousness has been established." Id. at 4--5 (citing
In re Best, 562 F.2d 1252 (CCP A 1977)).
However, Meadows's arbitration circuit is not identical or
substantially identical to the "control circuitry" of claim 18; such requires
more than the possibility of programming Meadows' s arbitration circuit to
"temporally shift[] at least one pulse in each potentially overlapping pulse
set a random amount," as recited in claim 18. See also Typhoon Touch
Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing
Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d
1367 (Fed. Cir. 2008)). For Meadows's arbitration circuit to be identical or
substantially identical to the claimed "control circuitry," the arbitration
circuit would have to be programmed to "temporally shift[] stimulation
pulses in the respective pulsed electrical waveforms by temporally shifting
at least one pulse in each potentially overlapping pulse set a random
amount," as recited in claim 18. For similar reasons the Examiner's findings
fall short of explaining how Meadows' s disclosure corresponds to the step of
"temporally shifting at least one pulse in each potentially overlapping pulse
set a random amount," as recited in claim 6.
Thus, the rejection of claims 6 and 18 as anticipated by Meadows is
not sustained. Additionally, the rejection of claims 7, 8, 19, and 20, which
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Application 12/550,213
depend either directly or indirectly from one of claims 6 and 18, is likewise
not sustained.
Obviousness based on Meadows
At the outset, we note that the Appellants do not provide an argument
for the rejection of dependent claims 10-12 and 22-24 under 35 U.S.C.
§ 103(a) as unpatentable over Meadows. Thus, we summarily affirm the
rejection of these claims.
The Appellants argue that the rejection of claims 2 and 14, which are
claims that depend from independent claims 1 and 13, respectively, is in
error. The Appellants support this argument by asserting that "merely
because the Meadows['s] system can be programmed to alternately shift the
pul[ s ]es in the respective timing channels, does not mean that claims 2 and
14 are not patentable over Meadows" and that "there is no disclosure,
teaching, or suggestion in Meadows that one of ordinary skill in the art
would program the hardware of the Meadows systems to enable the alternate
pulse shifting feature." Appeal Br. 7; see also Reply Br. 4--5. The
Appellants' argument is persuasive.
Notably, the Examiner's rejection of claims 2 and 14 includes the
following conclusion:
In this case, the arbitration circuit of Meadows' system is
disclosed to be capable of preventing stimulation pulses
overlapping by delaying the firing of pulses at alternating timing
channels, therefore it would have been obvious for one with
ordinary skill in the art to modify the arbitration circuit taught by
Meadows to perform the function as claimed in the pending
application.
Final Act. 5; see also Ans. 6-7.
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Even if we were to agree that Meadows' s arbitration circuit is capable
of delaying firing of pulses at alternating timing channels - which we do
not agree with - such does not explain why a one of ordinary skill in the art
would have had a motivation or reason to modify Meadows' s arbitration
circuit to perform the functionality recited in claim 14, i.e., "wherein the
control circuitry is configured for shifting stimulation pulses in the
respective pulsed electrical waveforms by alternately shifting one of the
stimulation pulses of each potentially overlapping pulse set between the
timing channels" or the similarly recited method step of claim 2.
Accordingly, we determine that the Examiner's conclusion fails to articulate
reasoning with some rational underpinning. See In re Kahn, 441 F .3d 977,
988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds ... [require]
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness") (cited with approval in KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007)).
Thus, the rejection of claims 2 and 14 as unpatentable over Meadows
is not sustained.
DECISION
We SUMMARILY AFFIRM the Examiner's decision rejecting:
claims 1, 9, 13, 21, 25, and 26 under 35 U.S.C. § 102(b) as anticipated by
Meadows; and claims 10-12, and 22-24 under 35 U.S.C. § 103(a) as
unpatentable over Meadows.
We REVERSE the Examiner's decision rejecting: claims 6-9 and
18-20 under 35 U.S.C. § 102(b) as anticipated by Meadows; and claims 2
and 14 under 35 U.S.C. § 103(a) as unpatentable over Meadows.
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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-IN-PART
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