Ex Parte Leven

Patent Trial and Appeal Board

Mar 31, 2017

13867704 (P.T.A.B. Mar. 31, 2017)

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.
BSNC-1-251.1 2039
EXAMINER
CAREY, MICHAEL JAMES
ART UNIT PAPER NUMBER
3766
MAIL DATE DELIVERY MODE
13/867,704 04/22/2013
50638 7590 04/03/2017
Boston Scientific Neuromodulation Corp.
c/o Lowe Graham Jones
701 Fifth Avenue
Suite 4800
Seattle, WA 98104
Jacob B. Leven
04/03/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte JACOB B. LEVEN
Appeal 2015-008140
Application 13/867,7041
Technology Center 3700
Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
MATTHEW S. MEYERS, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1 and 3—20. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellant, “[t]he real party in interest for this appeal is
Boston Scientific Neuromodulation Corporation.” Appeal Br. 2.
Appeal 2015-008140
Application 13/867,704
STATEMENT OF THE CASE
Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A paddle lead assembly for providing electrical
stimulation of patient tissue, the paddle lead comprising:
a paddle body having a longitudinal axis and a
transverse axis transverse to the longitudinal axis;
a plurality of electrodes disposed along the paddle
body, each of the plurality of electrodes having a five­
sided shape, wherein for each of the plurality of electrodes
the five-sided shape comprises a first end, a second end
opposite and parallel to the first end, a single-sided face
extending between the first end and the second end, and a
double-sided face opposite to the single-sided face and
also extending between the first end and the second end;
at least one lead body coupled to the paddle body;
a plurality of terminals disposed on the at least one
lead body; and
a plurality of conductive wires, each conductive
wire coupling one of the plurality of terminals to at least
one of the plurality of electrodes.
Rejection
Claims 1 and 3—20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over DiGiore (US 2009/0187221 Al, pub. July 23, 2009) and
Martens (US 2010/0030298 Al, pub. Feb. 4, 2010).
ANALYSIS
The Appellant argues claims 1 and 3—20 as a group. See Appeal
Br. 6—9. We select claim 1 as the representative claim from the group. See
37C.F.R. §41.37(c)(l)(iv).
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Appeal 2015-008140
Application 13/867,704
At the outset, we note that the Appellant acknowledges Martens’s
teaching in 144, which was relied upon by the Examiner to teach a plurality
of electrodes that have a five-sided shape (Final Act. 4). Appeal Br. 6. The
relevant teaching in Martens’s 144 describes:
The electrodes 112 may also take circular, square,
irregular, or other non-hexagonal shapes. In one
implementation, the electrodes 112 exhibit n-fold
symmetry about their respective centroids 117, where n is
an integer greater than or equal to three (3).
See also Martens Fig. 2. The Appellant states that this “description might
include a regular pentagon . . . which has 5-fold symmetry.” Appeal Br. 6.
Indeed, the foregoing description in Martens teaches a pentagon with five­
fold symmetry about a centroid, i.e., a “regular pentagon.”
The Examiner finds that the combined teachings of DiGiore and
Martens would result in a plurality of electrodes (i.e., an electrode array),
where each electrode is in a five-sided shape which the Examiner refers to as
a regular pentagon. See Final Act. 2, 4—5, 7; Ans. 3^4. More importantly,
the Examiner recognizes the difference in shape between a regular pentagon
and a five-sided shape, having two parallel ends, as required by claim 1,
which the Examiner refers to as an “irregular pentagon.”2 See Final
Act. 5—7. The Examiner determines:
it has been established previously that a change in shape
of an element without producing a new or unexpected
result over the previous teaching is an obvious
modification to those having ordinary skill in the art (In re
Dailey, 357 F.2d 669 . . . (CCPA 1966)). In the current
applicant [sic application], a change of shape would have
2 See, e.g., Spec. fig. 6, first end 602, second end 604, which are two
parallel ends of a five-sided shape. See id. 117.
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Appeal 2015-008140
Application 13/867,704
been an obvious modification and a modification that was
a matter of choice to a persona [sic] having ordinary skill
in the art because a ‘regular’ pentagon such as that taught
by Martens and an ‘irregular’ pentagon such as that limited
by the applicant would both provide electrical current to
the target tissue just as adequately.
Id. at 7.
The Appellant acknowledges the foregoing determination from the
Examiner. Appeal Br. 7—8. The Appellant argues that the claimed plurality
of electrodes, in which each electrode is in a five-sided shape having two
parallel ends, has advantages over Martens’s plurality of electrodes, in
which each electrode is in the shape of a regular pentagon. See id. at 8. The
Appellant asserts that these advantages include more densely packed
electrodes, particularly in interleaving columns, which provide “substantially
less ‘dead space’ between electrodes” and “permit more precise delivery of
electrical stimulation to targeted tissue.” See id. at 8—9 (citing Spec. Figs. 5,
7,9). In the Reply Brief, the Appellant adds the following example:
Paddle leads with the recited pentagonal structure
can be used, for example, to provide spinal cord
stimulation. Specification, page 1, lines 16—21 and page
6, lines 6—9. The spinal cord is a long, relatively straight
anatomical structure and electrodes for stimulating the
spinal cord are advantageously arranged in columns, as
illustrated in the four columns paddle leads of Figures 5
(reproduced below), 7, and 9 of the present patent
application. The arrangement of electrodes in columns
can also be useful for stimulation of other anatomical
structures.
Reply Br. 4. The Appellant’s argument is not persuasive.
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Appeal 2015-008140
Application 13/867,704
The Examiner finds, and shows, that “regular pentagons can be just as
densely packed as irregular pentagons.”3 Ans. 4; see also id. at 3. Appellant
does not persuasively challenge this showing. As for the Appellant’s
assertion that electrodes with “the recited pentagonal structure,” when used
for spinal cord stimulation are “advantageously arranged in columns,” the
Appellant presents no persuasive evidence or technical reasoning explaining
how this arrangement of electrodes provides any benefit in stimulating the
tissue of the spinal cord as compared to an array of electrodes having
densely packed regular shaped pentagons, as would have resulted from the
modification of DiGiore’s electrode array in view of Martens’s teaching of
electrodes having regular pentagon shape.
Further, we note that the Specification describes “[i]n at least some
embodiments, the first end 602 and the second end 604 are parallel with one
another.” Spec. 17,11. 22—23. The foregoing description implies that some
embodiments lack a parallel orientation of the first end 602 and second end
604. And, the Specification does not appear to attribute any benefit to
electrodes with a five-sided shape having a first end and a second end in a
parallel orientation as compared to electrodes with five-sided shape having a
first end and a second end that are not in a parallel orientation.
We have considered the remainder of the Appellant’s arguments in the
Appeal Brief and the Reply Brief, and determine that they are not
persuasive.
Thus, we sustain the Examiner’s rejection of claims 1 and 3—20 as
unpatentable over DiGiore and Martens.
3 In the Answer, the Examiner includes a depiction of densely packed
regular pentagons. Ans. 4.
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Appeal 2015-008140
Application 13/867,704
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1 and 3—20.
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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