Ex Parte Moffitt

Patent Trial and Appeal Board

Jun 24, 2013

11752898 (P.T.A.B. Jun. 24, 2013)

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.
11/752,898 05/23/2007 Michael A. Moffitt 06-01568-01 4570
23410 7590 06/24/2013
Vista IP Law Group LLP
2040 MAIN STREET, Suite 710
IRVINE, CA 92614
EXAMINER
LEE, ERICA SHENGKAI
ART UNIT PAPER NUMBER
3766
MAIL DATE DELIVERY MODE
06/24/2013 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 MICHAEL A. MOFFITT
____________

Appeal 2011-004982
Application 11/752,898
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, HYUN J. JUNG, and
ADAM V. FLOYD, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 11-20. Claims 1-10 are withdrawn. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
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Application 11/752,898

2
CLAIMED SUBJECT MATTER
Claim 11 is the sole independent claim on appeal, is representative of
the subject matter on appeal, and recites with added emphasis:
11. A neurostimulation system, comprising:
a plurality of electrical contacts;
output stimulation circuitry capable of
outputting electrical pulses to the plurality of
electrical contacts in accordance with a pulse
pattern; and
control circuitry capable of defining the
pulse pattern, such that the electrical pulses
comprise at least one conditioning pulse outputted
to the plurality of electrical contacts in one of a
monopolar and a multipolar manner, and at least
one stimulation pulse outputted to the plurality of
electrical contacts in a different one of the
monopolar and multipolar manner.

REJECTIONS
The following Examiner’s rejections are before us for review:
claims 11-16 and 18-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gielen (US 2003/0204219 A1, pub. Oct. 30, 2003) and
Andrews (US 2002/0055779 A1, pub. May 9, 2002); and
claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gielen, Andrews, and Cross (US 2003/0204228 A1, pub.
Oct. 30, 2003).

OPINION
The Examiner finds that Gielen discloses the limitations of claim 11,
including delivering monopolar and multipolar stimulation pulses and
conditioning pulses but “does not expressly disclose that the conditioning
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Application 11/752,898

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pulses should have different stimulation parameters as compared to the
therapy pulses.” Ans. 4, 8; see Gielen, paras. [0038], [0069]. The Examiner
also finds that Andrews discloses “deliver[ing] a conditioning pulse with
different stimulation parameters than subsequent pulses, for instance, an
initial pulse with a greater amplitude or a different shape (abstract).” Ans. 8.
The Examiner concludes that:
[i]t would have been obvious to one of ordinary
skill in the art at the time the invention was made
to modify Gielen to deliver at least one
conditioning pulse in one of a monopolar and
multipolar manner, and at least one stimulation
pulse in a different one of the monopolar and
multipolar manner as taught by Andrews in order
to help provide the prevention of an initial action
potential ([0019]).
Ans. 4-5.
The Appellant contends that the Examiner’s interpretation of “a
different one of a multipolar and multipolar manner,” as recited in claim 11,
is not consistent with the broadest reasonable interpretation of the
Specification as it would be interpreted by one of ordinary skill in the art.
App. Br. 4-5 (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004)); see also Reply Br. 1-2. The Appellant contends that “[i]n
the present case, the [S]pecification makes clear that this language requires
the conditioning pulse(s) to be outputted in a multipolar manner and the
stimulation pulses(s) to be outputted in a monopolar manner, or vice versa.”
App. Br. 5. We agree.
At the outset, we note that the Specification recites:
. . . conveying at least one conditioning pulse from
the plurality of electrodes in one of a monopolar
manner and a multipolar manner, and conveying at
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Application 11/752,898

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least one stimulation pulse from the plurality of
electrodes in a different one of the monopolar
manner and the multipolar manner.

Spec. para. [0011] (emphasis added). Independent claim 11 recites “at least
one conditioning pulse outputted to the plurality of electrical contacts in one
of a monopolar and a multipolar manner, and at least one stimulation pulse
outputted to the plurality of electrical contacts in a different one of the
monopolar and multipolar manner.” Emphasis added. This claim recitation
is synonymous with the quotation from the Specification. The Specification
explains the meaning of “a different one of the monopolar manner and the
multipolar manner”:
That is, the conditioning pulse(s) may be
conveyed from the plurality of electrodes in a
monopolar manner, in which case, the stimulation
pulse(s) is conveyed from the plurality of
electrodes in a multipolar manner, or the
conditioning pulse(s) may be conveyed from the
plurality of electrodes in a multipolar manner, in
which case, the stimulation pulse(s) is conveyed
from the plurality of electrodes in a monopolar
manner.

Spec. [0012] (emphasis added). Furthermore, although the Background of
the Invention section of the Specification states that “coupling monopolar
conditioning pulses with monopolar stimulation pulses, and coupling
multipolar conditioning pulses with multipolar stimulation pulses” is known
in the prior art (Spec. [0009]), the Specification never suggests that the
claimed subject matter is directed to such a coupling. Indeed, the
Specification consistently refers to the claimed subject matter as explained
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Application 11/752,898

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in paragraphs [0011]-[0012], which is consistent with the Appellant’s
contention. See also Spec. passim.
The Examiner does not find that either Gielen or Andrews discloses
that if the conditioning pulse(s) is outputted in a monopolar manner, the
stimulation pulse(s) is outputted in a multipolar manner or that if the
conditioning pulse(s) is outputted in a multipolar manner, the stimulation
pulse(s) is outputted in a monopolar manner. See Reply Br. 2-5.1 As
discussed above, the Examiner finds that Andrews discloses a conditioning
pulse with a greater amplitude or a different shape, however, this finding
does not read on “a different one of the monopolar and multipolar manner”
as recited in claim 11. Accordingly, the Examiner rejection of claim 11
lacks rational underpinning.
Furthermore although claim 13, which depends directly from
claim 11, calls for the conditioning pulse being monopolar and the
stimulating pulse being multipolar, and claim 14, which also depends
directly from claim 11, calls for the conditioning pulse being multipolar and
the stimulating pulse being monopolar, the Examiner’s rejection of these
claims relies on “the rejection of claim 11.” Reply Br. 3 (citing Ans. 5).
The Examiner appears to offer additional support for the conclusion of
obviousness of these claims by determining that “Gielen discloses delivering
monopolar and multipolar electrical pulses, [sic which is] obvious to one of
ordinary skill in the art as being pulses of different shapes . . . .” Ans. 8-9.
This offering by the Examiner does not remedy the deficiency in the

1 The Reply Brief lacks page numbers. For purposes of referencing the
page numbers of the Reply Brief, the first words on the first page of the
Reply Brief states, “IN THE UNITED STATES PATENT AND
TRADEMARK OFFICE.” The Reply Brief includes five pages.
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Application 11/752,898

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Examiner’s rejection of claim 11. See also Reply Br. 3-5. Put simply, the
shape of a pulse is distinct from the polarity of a pulse.2 As such, the
Examiner’s rejection of claims 13 and 14 also lacks rational underpinning.
See Reply Br. 2-5.
For the foregoing reasons the rejection of claims 11-16 and 18-20 as
unpatentable over Gielen and Andrews is not sustained.
As for the rejection of claims 16 and 17, under 35 U.S.C. § 103(a) as
unpatentable over Gielen, Andrews, and Cross, the Examiner’s additional
findings as evidenced by Cross do not remedy the deficiencies of the
Examiner’s rejection of claim 11 as discussed above. Thus, the rejection of
claims 16 and 17 as unpatentable over Gielen, Andrews, and Cross is not
sustained.

DECISION
We REVERSE the rejections of claims 11-20.

REVERSED

Klh

2 A monopolar electrical pulse is described in paragraph [0042] of the
Specification, as well as described in examples throughout the Specification;
and types of multipolar electrical pulses are also described in the
Specification, for example bipolar and tripolar in paragraph [0043].