Ex Parte Starkebaum et al

Patent Trial and Appeal Board

Nov 15, 2017

12887149 (P.T.A.B. Nov. 15, 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.
12/887,149 09/21/2010 Warren L. Starkebaum P0036237.01/1023-890US01 1938
71996 7590 11/17/2017
SHUMAKER & SIEFFERT , P.A
1625 RADIO DRIVE , SUITE 100
WOODBURY, MN 55125
EXAMINER
WU, TONG E
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
11/17/2017 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):
pairdocketing @ ssiplaw.com
medtronic_neuro_docketing @ cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WARREN L. STARKEBAUM, ROLAND C. MAUDE-GRIFFIN,
ELIZABETH D. FIRESTONE, CARL A. SCHU, and ORHAN SOYKAN
Appeal 2015-0076591
Application 12/887,1492
Technology Center 3700
Before JAMES A. WORTH, KENNETH G. SCHOPFER, and
AMEE A. SHAH, Administrative Patent Judges.
SCHOPFER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1—10, 13—25, and 28—51. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references the Appeal Brief (“Appeal Br.,” filed Mar. 16,
2015) and Reply Brief (“Reply Br.,” filed Aug. 12, 2015), and the
Examiner’s Answer (“Ans.,” mailed June 12, 2015) and Final Office Action
(“Final Act.,” mailed Oct. 14, 2014).
2 According to Appellants, the real party in interest is Medtronic, Inc.
Appeal Br. 3.
Appeal 2015-007659
Application 12/887,149
BACKGROUND
According to Appellants, the Specification “relates to medical
devices, and more particularly, medical devices for delivery of electrical
stimulation therapy.” Spec. 12.
REPRESENATIVE CLAIM
Claim 1 is illustrative of the appealed claims and recites:
1. A method comprising controlling, via at least one
processor, delivery of a series of pulses with alternating pulse
polarities from a medical device to a target location of a
gastrointestinal (GI) tract of a patient, wherein the series of
pulses includes at least a first pulse of a first polarity, a second
pulse of a second polarity, a third pulse of the first polarity, and
a fourth pulse of the second polarity, wherein the first, second,
third and fourth pulses are delivered to the target location in
direct succession, in that order, wherein the first pulse and second
pulse are separated by a first time delay, the second pulse and
third pulse are separated by a second time delay, the third pulse
and the fourth pulse are separated by a third time delay, and
wherein an increase in a pulse frequency of the series of pulses
causes the first time delay, the second time delay, and third time
delay to decrease in duration, and a decrease in the pulse
frequency of the series of pulses causes the first time delay, the
second time delay, and third time delay to increase.
Appeal Br. 16.
REJECTIONS
1. The Examiner rejects claims 1—10, 13—25, and 28—51 under 35 U.S.C.
§ 103(a) as unpatentable over Starkebaum3 in view of Bowers.4
3 Starkebaum, US 2007/0282387 Al, pub. Dec. 6, 2007.
4 Bowers, US 3,563,247, iss. Feb. 16, 1971.
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Appeal 2015-007659
Application 12/887,149
2. The Examiner rejects claims 1 under the doctrine of nonstatutory
obviousness-type double patenting as unpatentable over claim 11 of U.S.
Patent Application No. 13/445,718.
DISCUSSION
Rejection 1
With respect to each of the independent claims on appeal, the
Examiner finds:
Starkebaum discloses substantially the same invention as
claimed, including delivery of a series of pulses to the GI tract of
a patient (abstract) wherein the series of pulses includes pulses
separated by time delays (Paragraph 36), wherein increases/
decreases in pulse frequency causes decreases/increases,
respectively, in the duration of time delays (time delays
inherently change with frequency at a chosen pulse width).
Final Act. 4. The Examiner acknowledges that Starkebaum does not
disclose that the series of pulses have alternating polarities. Id. To cure this
deficiency, the Examiner relies on Bowers and concludes that “it would have
been obvious to one with ordinary skill in the art at the time the invention
was made to modify Starkebaum as taught by Bowers to include inverting
the polarity of the odd-numbered pulses, in order to provide charge­
balancing.” Id. (citing Bowers Figs. 4, 5; Abstract; col. 1,11. 46—52).
We are persuaded of reversible error in the rejection because the
Examiner has not established that the art of record teaches or otherwise
renders obvious the claim requirement
wherein the first pulse and second pulse are separated by a first
time delay, the second pulse and third pulse are separated by a
second time delay, the third pulse and the fourth pulse are
separated by a third time delay, and wherein an increase in a
pulse frequency of the series of pulses causes the first time delay,
the second time delay, and third time delay to decrease in
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Application 12/887,149
duration, and a decrease in the pulse frequency of the series of
pulses causes the first time delay, the second time delay, and
third time delay to increase
as recited in claim 1 and similarly required by each of the remaining
independent claims on appeal.
With respect to the quoted claim language, the Examiner takes the
position that the pulses delivered in Starkebaum must necessarily include a
time delay between pulses and that the Starkebaum’s pulses are “ordinary,
unpaired pulses” such that the time delays between pulses would “inherently
change with frequency at a chosen pulse width” as claimed. Final Act. 2,4.
Thus, the Examiner takes the position that Starkebaum inherently discloses
both time delays and also the relationship between frequency and time
delays as claimed. However, as discussed below, we find that the
Examiner’s position is not supported by a preponderance of the evidence
before us and the Examiner does not otherwise establish that these claim
requirements would have been obvious.
First, with respect to the position that Starkebaum must necessarily
include time delays between pulses, we agree with Appellants that the
Examiner has not established that such is the case. Here, the Examiner
concludes that “a time delay must exist between pulses, otherwise the pulses
could not be considered individual pulses.” Final Act. 2. However, the
Examiner does not provide a specific citation to Starkebaum regarding this
finding, but rather, the Examiner cites only the following portions of
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Appeal 2015-007659
Application 12/887,149
Starkebaum in support of the rejection with respect to the relevant claim
limitations:5
The disclosure is directed to techniques for delivering
electrical stimulation therapy to support obesity management.
The electrical stimulation therapy is configured to cause at least
partial gastric distention. Gastric distention tends to induce a
sensation of fullness and thereby discourages excessive food
intake by the patient. The electrical stimulation therapy may be
delivered to the gastrointestinal tract of the patient by electrodes
deployed by one or more implantable leads coupled to an
electrical stimulator. The electrical stimulator delivers
stimulation pulses having a pulse width in a range found to be
effective in causing gastric distention.
As one illustration, to cause gastric distention, stimulator
12 may deliver stimulation pulses with an amplitude of
approximately 1 to 10 mA, a pulse width of approximately 2 to
10 milliseconds (ms), a pulse rate of approximately 1 to 60 Hz,
and a duty cycle of approximately 25% ON/75% OFF. As
another illustration, stimulator 12 may deliver stimulation pulses
with an amplitude of approximately 3 to 6 mA, a pulse width of
approximately 2 to 5 milliseconds (ms), a pulse rate of
approximately 20 to 50 Hz, and a duty cycle of approximately
40% ON/60% OFF. In each case, stimulator 12 will cause
substantial gastric distention and a sensation of fullness, resulting
in reduced food intake and, ultimately, weight loss.
Starkebaum Abstract, 136. We see no indication in the cited portions of
Starkebaum that Starkebaum’s pulses must be separated by a time delay, and
the Examiner has not established, with citation to the art or other evidence,
why a time delay must separate individual pulses. Thus, we disagree with the
Examiner’s finding that Starkebaum’s pulses must inherently be separated
5 Although the Examiner cites, several additional references in the Answer,
the Examiner does not use these references to address the claim requirement
discussed here, i.e. the requirement of a time delay between each pulse.
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Application 12/887,149
by a time delay. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)
(“Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.”); see also Reply Br. 4 (providing possible
situations where pulses may not be separated by a time delay).
Second, regarding the Examiner’s finding that Starkebaum necessarily
discloses that an increase in pulse frequency results in a decrease in time
delays or that a decrease in pulse frequency results in an increase in time
delays, we cannot agree, based on our finding above, that Starkebaum
necessarily discloses that there is a time delay between pulses. Further, we
see no teaching or suggestion in the cited portions of Starkebaum or Bowers,
and the Examiner provides no further explanation, that supports a showing
that this claim requirement otherwise would have been obvious.
Based on the foregoing, we do not sustain the rejections before us
because the Examiner has not shown that the art of record discloses, or
otherwise shows that it would have been obvious to include, the claim
limitations discussed above.
Rejection 2
We do not sustain the double patenting rejection of claim 1 because,
as noted by Appellants (Appeal Br. 15), Application No. 13/445,718 has
been abandoned.
CONCLUSION
We REVERSE the rejections before us for the reasons stated herein.
REVERSED
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