Ex Parte Su et al

Patent Trial and Appeal Board

Mar 23, 2017

13701654 (P.T.A.B. Mar. 23, 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.
13/701,654 12/03/2012 Xin Su P0038788.USN2/LG10137.L33 1443
7590 03/23/2017
Medtronic, Inc.
710 Medtronic Parkway NE
Minneapolis, MN 55432
EXAMINER
PLATES KI, ERIN M
ART UNIT PAPER NUMBER
3766
MAIL DATE DELIVERY MODE
03/23/2017 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 XIN SU and DWIGHT E. NELSON
Appeal 2015-002206
Application 13/701,6541
Technology Center 3700
Before JILL D. HILL, THOMAS F. SMEGAL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Xin Su and Dwight E. Nelson (Appellants) seek our review under 35
U.S.C. § 134 of the Examiner’s rejection2 of claims 1—7, 15—22, and 29-35
under 35 U.S.C. § 102(b) as anticipated by Stephens (US 2009/0054950 Al,
pub. Feb. 26, 2009); and of claim 43 under 35 U.S.C. § 103(a) as
unpatentable over Stephens and Ishikawa (US 5,984,854, iss. Nov. 16,
1999).3 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Medtronic, Inc.
Appeal Br. 3.
2 Appeal is taken from the adverse decision of the Examiner as set forth in
the Final Office Action, dated March 26, 2014 (“Final Act.”).
3 Claims 8—14, 23—28, and 36-42 have been canceled. Id.
Appeal 2015-002206
Application 13/701,654
CLAIMED SUBJECT MATTER
Claims 1,15, and 29 are independent. Claim 1 is reproduced below
and illustrates the claimed subject matter, with disputed limitations
emphasized.
1. A system comprising:
a stimulation delivery module configured to generate and
deliver electrical stimulation to a patient; and
a control module configured to control the stimulation
delivery module to deliver the electrical stimulation to the
patient, detect a therapy trigger event, and control the stimulation
delivery module to terminate the delivery of the electrical
stimulation in response to the detected therapy trigger event to
induce a desired therapeutic effect in the patient after the
termination of the electrical stimulation,
wherein the electrical stimulation is insufficient to cause
the desired therapeutic effect during the delivery of the electrical
stimulation but sufficient to induce the desired therapeutic
effect after the delivery of the electrical stimulation is
terminated.
ANALYSIS
Anticipation of Claims 1—7, 15—22, and 29—35 by Stephens
We are persuaded by Appellants’ arguments that the Examiner fails to
establish anticipation of claims 1—7, 15—22, and 29-35 by Stephens. See
Appeal Br. 7—12; Reply Br. 3—7.
The Examiner finds that Stephens anticipates the claims by disclosing
“a system and method of using a stimulation delivery module. . . configured
to generate and deliver electrical stimulation to a patient,” wherein a
“control unit is means for terminating the electrical stimulation ... to induce
a desired therapeutic effect in the patient after termination of the electrical
stimulation,” and “enable the patient to urinate, because urination cannot
2
Appeal 2015-002206
Application 13/701,654
take place while the patient is receiving electrical stimulation.” Final Act.
2—3 (citing Stephens, Fig. 3; H 87, 131). The Examiner also reasons that
Stephens “is configured such that the electrical stimulation is insufficient to
cause the desired therapeutic effect during the delivery of the electrical
stimulation,” explaining that “the patient cannot void, which is the desired
therapeutic effect, while the electrical stimulation takes place, therefore the
electrical stimulation is insufficient to cause the desired therapeutic effect[],
but sufficient to induce the desired therapeutic effect after the delivery of the
electrical stimulation is terminated.” Id. at 3 (emphasis added).
In taking issue with the analysis and conclusions presented in the
Final Action, Appellants first contend that “[t]he Examiner thus
characterized ‘urination’ disclosed by Stephens as the claimed desired
therapeutic effect,” but point out that “cited paragraph [0087] of Stephens
discloses that ‘[w]hen the patient wishes to urinate ... the control unit 9
operates to turn the stimulating signal off causing the sphincter to relax and
allow the patient to urinate.’” Appeal Br. 8. Appellants explain “Stephens
discloses that turning the stimulation signal off ceases the treatment such
that the patient can return to the untreated state for urination to occur,”
contending that “[although a patient must urinate at some point, one of
ordinary skill in the art would not characterize the return of incontinence
symptoms when turning off electrical stimulation therapy to be a desired
therapeutic effect disclosed by Stephens.” Id. at 8—9.
Furthermore, Appellants contend that “Stephens fails to suggest that
electrical stimulation is sufficient to induce the desired therapeutic effect
after delivery of electrical stimulation is terminated.” Id. at 10. Appellants
reason that “[i]f the therapeutic effect is urination, as asserted by the
3
Appeal 2015-002206
Application 13/701,654
Examiner, none of the electrical stimulation of Stephens is disclosed as
sufficient to induce urination either during electrical stimulation or after
electrical stimulation is terminated,” because “Stephens discloses that the
stimulation signal maintains pressure on the urethra or stimulates the
afferent nerves to reduce or avoid incontinence (i.e., urination).” Id.
Appellants also explain that “although termination of the stimulation in
Stephens may allow urinary incontinence (e.g., eventual urination) to return,
the Examiner has failed to cite any passage of Stephens that suggests that
termination of electrical stimulation induces urination after termination of
the electrical stimulation.” Id. at 11.
In response, and without identifying any support in Stephens, the
Examiner disputes “[Appellants’ argument that the urination disclosed by
Stephens is not a therapeutic effect induced by the electrical stimulation,”
arguing that “the claim does not state that the therapeutic effect is induced
by the electrical stimulation; rather, the claim only states that the therapeutic
effect takes place after the conclusion of the electrical stimulation.” Ans. 8
(emphasis added).
However, we agree with Appellants that “claim 1 explicitly recites,
inter alia, ‘a control module configured to . . . control the stimulation
delivery module to terminate the delivery of the electrical stimulation in
response to the detected therapy trigger event to induce a desired therapeutic
effect in the patient after the termination of the electrical stimulation,
wherein the electrical stimulation is . . . sufficient to induce the desired
therapeutic effect after the delivery of the electrical stimulation is
terminated.” Reply Br. 4. Thus, we find the position taken by the Examiner
to be unsupported by the evidence of record.
4
Appeal 2015-002206
Application 13/701,654
[Ujnless a reference discloses within the four comers of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the thing
claimed and, thus, cannot anticipate under 35 U.S.C. § 102.
Net Money IN, Inc., v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir.
2008).
For the foregoing reasons, we do not sustain the Examiner’s decision
rejecting claims 1—7, 15—22, and 29-35 as anticipated by Stephens.4
Obviousness of Claim 43 over Stephens5 or over Stephens and
Ishikawa
Regarding claim 43, both of the Examiner’s rejections are based on
the same unsupported findings discussed above with respect to the
4 We note that we are unable to find where Appellants’ Specification
identifies the amount of electrical stimulation that is “sufficient to induce the
desired therapeutic effect after the delivery of the electrical stimulation is
terminated,” as recited by claim 1. While the Specification at paragraphs
110 and 111 generally describes procedures for determining the amount of
stimulation that is insufficient to induce a desired therapeutic response, the
Specification fails to disclose the amount of stimulation that when
terminated, would be sufficient to induce the desired therapeutic effect.
Thus, we find the Appellants’ Specification merely describes “a trial and
error process,” rather than provide the required disclosure that would enable
one skilled in the art to practice the invention. See In re Wands, 858 F.2d
731,737 (Fed. Cir. 1988).
5 Appellants describe this as a new ground of rejection. Reply Br. 10. The
proper mechanism for Appellants to challenge an alleged new ground of
rejection in the Answer is through a petition to the Director under 37 C.F.R.
§ 1.181 (a) within two months from the mailing of the examiner's answer.
See MPEP § 1207.03(IV). Regarding claim 43, we also note that the
“desired therapeutic effect” options set forth therein do not all appear to be
enumerated in Appellants’ Specification as effects that are attributable to the
therapy embodiment set forth in claim 1.
5
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Application 13/701,654
disclosure of Stephens. See Final Act. 6—7; Ans. 6—7, 10. The addition of
Ishikawa does not remedy the deficiencies of Stephens, as discussed supra.
Accordingly, for similar reasons as discussed above for claim 1, we
do not sustain the Examiner’s decision rejecting claim 43 over Stephens or
Stephens and Ishikawa.
DECISION
The Examiner’s prior-art rejections are reversed.
REVERSED
6