Robert J. Greenberg et al.

Patent Trials and Appeals Board

Jul 30, 2019

12168740 - (D) (P.T.A.B. Jul. 30, 2019)

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.
12/168,740 07/07/2008 Robert J. Greenberg S506-USA 8030
28284 7590 07/30/2019
SECOND SIGHT MEDICAL PRODUCTS, INC.
12744 SAN FERNANDO ROAD
Suite 400
SYLMAR, CA 91342
EXAMINER
WU, TONG E
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
07/30/2019 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):
MMARSH@2-SIGHT.COM
SCOTTD@2-SIGHT.COM
revans@2-SIGHT.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ROBERT J. GREENBERG,
JORDAN MATTHEW NEYSMITH, NEIL HAMILTON TALBOT,
JAMES SINGLETON LITTLE, KELLY H. MCCLURE,
BRIAN V. MECH, RONGQING DAI,
DAVID DAOMIN ZHOU, and GAILLARD R. NOLAN1
__________

Appeal 2019-001473
Application 12/168,740
Technology Center 3700
__________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner’s final rejection of claims 1, 5, 6, 19, and 21–23. Claims 3, 8, 10–
17, 20, 24, and 25 have been withdrawn from consideration, and claims 2, 4,
7, 9, 18, and 25 have been canceled. Final Act. 1 (Office Action Summary);
App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). For the reasons

1 “The real party in interest for this Appeal is Second Sight Medical
Products, Inc.” App. Br. 1. We refer to the appealing party as “Appellant.”

Appeal 2019-001473
Application 12/168,740

2
explained below, we do not find error in the Examiner’s rejection of these
claims. Accordingly, we AFFIRM the Examiner’s rejection of claims 1, 5,
6, 19, and 21–23 as being unpatentable under 35 U.S.C. § 103(a).

CLAIMED SUBJECT MATTER
The disclosed subject matter relates to “neural stimulation and more
specifically to an improved electrode array for neural stimulation.” Spec.
1:17–18. Claim 1 is the sole independent claim, is representative of the
claims on appeal, and is reproduced below.
1. An implantable device comprising:
an electronics package suitable to be attached to a sclera;
a flexible circuit electrode array including
a polymer base layer;
metal traces deposited on said polymer base layer,
including stimulating electrodes suitable to be placed on an
epiretinal surface and suitable to stimulate a retina, and a
plurality of contact pads for connecting the stimulating
electrodes to the electronics package, and a polymer top layer
deposited on said polymer base layer and said metal traces, the
flexible circuit electrode array including a portion suitable to
pass through the sclera at the pars plana;
an array of return electrodes suitable to be external to a
sclera, suitable to be in electrical contact with the sclera, suitable
to be electrically sealed on a side away from the sclera and
connected to the electronics package, the return electrodes being
larger than the stimulating electrodes;
a first fixation structure suitable to fix the flexible circuit
electrode array to an epiretinal surface; and
a second fixation structure, concentric with the first
fixation structure forming concentric fixation structures, suitable
to fix the array of return electrodes to the sclera aligned with the
stimulating electrodes outside of the sclera.

Appeal 2019-001473
Application 12/168,740

3
REFERENCES
Suaning et al. US 7,003,355 B1 Feb. 21, 2006
Williamson et al. US 2003/0149458 A1 Aug. 7, 2003
Hung et al. US 2003/0195601 A1 Oct. 16, 2003
Greenberg et al.2 US 2003/0233134 A1 Dec. 18, 2003
Chowdhury et al. US 2006/0095108 A1 May 4, 2006
Greenberg el al.3 EP 1 762 269 A2 Mar. 14, 2007

THE REJECTION ON APPEAL
Claims 1, 5, 6, 19, and 21–23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Greenberg 1, Hung, Suaning, and Greenberg 2, or
alternatively, over Greenberg 1, Hung, Suaning, Greenberg 2, Chowdhury,
and Williamson. Final Act. 3.

ANALYSIS
Appellant argues claims 1, 5, 6, 19, and 21–23 together. App. Br. 5–
8. We select claim 1 for review, with claims 5, 6, 19, and 21–23 standing or
falling therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Greenberg 1 discloses an implantable device
comprising stimulating electrodes suitable to be placed on an epiretinal
surface and suitable to stimulate a retina. Final Act. 3 (citing Greenberg 1
¶¶ 6–8, 45; Figs. 1, 4). The Examiner, however, acknowledges that
Greenberg 1 “do[es] not disclose details of the return electrode.” Final Act.
4. The Examiner relies on Suaning for disclosing “an array of return

2 The Examiner and Appellant identify this reference as “Greenberg 1.” We
shall do the same.
3 The Examiner and Appellant identify this reference as “Greenberg 2.” We
shall do the same.
Appeal 2019-001473
Application 12/168,740

4
electrodes 50 (Col. 4, lines 16–21, 34–48) outside of the sclera (Figure 1;
Col. 4, line 66+; Col. 5, lines 15–29: electrode arrangement is reversible).”
Final Act. 4. The Examiner concludes that it would have been obvious to
modify the implantable device of Greenberg 1, with the teachings of
Suaning “to include return electrodes suitable to be external to a sclera as
recited, in order to locate the return electrodes opposite the epiretinal array
so as to allow for efficient and high resolution retinal stimulation and
prevent movement of the array.” Final Act. 4.4
Appellant contends that “[w]hat is missing from the prior art is a
teaching of stimulating electrodes on the epiretinal surface in combination
with return electrodes external to, and on the surface of, a sclera.” App. Br.
5. Appellant argues that “Suaning teaches away from the present invention”
because Suaning discloses that “[i]n an exemplary embodiment, a visual
prosthesis system includes first and second electrodes spaced from the
retina.” App. Br. 5–6 (quoting with emphasis Suaning 3:15–17); see also id.
at 6–7; Reply Br. 3–5.
Appellant’s contentions are unpersuasive. First, to the extent that
Appellant intimates that the Examiner relies on Suaning for disclosing both
the claimed “stimulating electrodes” (“Suaning clearly does not envision
‘stimulating electrodes suitable to be placed on any epiretinal surface’”
(App. Br. 6)) and “return electrodes,” such a contention does not address the
rejection because the Examiner already finds that Greenberg 1 discloses
“stimulating electrodes suitable to be placed on an epiretinal surface and

4 The Examiner relies on Hung, Greenberg 2, Chowdhury, and Williamson
for disclosing limitations other than those discussed above. See Final Act.
4–7.
Appeal 2019-001473
Application 12/168,740

5
suitable to stimulate a retina,” as claimed. See Final Act. 4; see also Ans. 6
(explaining that “epiretinal stimulating electrodes are already shown in
Greenberg 1”).
Second, to the extent that Appellant contends that the Examiner relies
on Suaning as disclosing “an array of return electrodes suitable to be
external to a sclera, suitable to be in electrical contact with the sclera,” but
that “Suaning teaches away from” this claimed limitation (App. Br. 5, 6),
this contention is also unpersuasive. “‘[T]he fact that a specific
[embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.’” See Merck & Co. Inc. v. Biocraft Labs. Inc., 874 F.2d 804,
807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA
1976)). See also In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971) (holding
that disclosed examples and preferred embodiments do not constitute a
teaching away from a broader disclosure or non-preferred embodiments).
Here, Suaning clearly discloses that electrodes 60 can operate as
“return electrodes.” Suaning 4:19–20 (“reference electrodes 60 are to be
used as the return path for the stimulation pulse” (emphasis added)); see
also id. at Fig. 1; Final Act. 4. Suaning further discloses that electrodes 50
can operate as return electrodes because Suaning discloses that “the role of
the stimulating and reference electrodes 50, 60 may be reversed through
electronics.” Suaning 5:15–17 (emphasis added). Suaning also discloses
that “[a]lternatively, electrodes 50, 60 may engage the sclera 74 by attaching
to the surface of the sclera 74.” Suaning 4:66–5:1 (emphasis added); see
also Ans. 7. As such, there is merit to the Examiner’s finding that Suaning
discloses return electrodes (whether electrodes 50 or 60) positioned on the
Appeal 2019-001473
Application 12/168,740

6
surface of the sclera. See also Ans. 6 (explaining that “being spaced from
the retina does not mean also being spaced from the sclera” and “being
distant from the retina does not exclude sclera placement”). We note
Appellant’s contention that Suaning’s disclosure “where the electrode is
reversible” should not be confused with its “alternative embodiment.” See
App. Br. 6; Reply Br. 3. However, Appellant does not explain why these
disclosures should be considered separate and distinct embodiments or that
Suaning teaches away from combining these embodiments.
Appellant further argues that “Greenberg 2 teaches that the
stimulating array should be epiretinal and the return electrode should be
subretinal.” App. Br. 6; see also Reply Br. 3–4. This argument is
unpersuasive in that it does not address the rejection. “Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references []. [The
reference] must be read, not in isolation, but for what it fairly teaches in
combination with the prior art as a whole.” In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986). As the Examiner responds, the “Examiner is
not relying on Greenberg 2 for a scleral return electrode array” and
“Greenberg 2 was relied on for the design of fixation structures.” Ans. 8;
see also Final Act. 5.
Appellant contends that the Examiner’s rejection is based on
impermissible hindsight reconstruction. See App. Br. 7; Reply Br. 5.
However, in view of the express teachings of Greenberg 1 and Suaning as
discussed above, we do not agree with Appellant that the Examiner’s
rejection is based on impermissible hindsight reconstruction.
Appeal 2019-001473
Application 12/168,740

7
Appellant additionally contends that “nothing in the prior art teaches
the motivation for the present invention, which is to focus the electric field
of the stimulating electrodes through the aligned return electrodes across the
sclera.” App. Br. 8; Reply Br. 6. However, we note that the Supreme Court
has provided instructions on this point stating, “[i]n determining whether the
subject matter of a patent claim is obvious, neither the particular motivation
nor the avowed purpose of the patentee controls” and “any need or problem
known in the field of endeavor at the time of invention and addressed by the
patent can provide a reason for combining the elements in the manner
claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419–20 (2007).
Further, Appellant does not explain why the Examiner’s reason for
modifying the implantable device of Greenberg 1 with the teachings of
Suaning, namely, “to include return electrodes suitable to be external to a
sclera as recited, in order to locate the return electrodes opposite the
epiretinal array so as to allow for efficient and high resolution retinal
stimulation and prevent movement of the array,” lacks rational
underpinning.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claim 1 as being unpatentable over
Greenberg 1, Hung, Suaning, and Greenberg 2, or alternatively, over
Greenberg 1, Hung, Suaning, Greenberg 2, Chowdhury, and Williamson.
We thus sustain the rejection of claims 1, 5, 6, 19, and 21–23.

DECISION
The Examiner’s rejection of claims 1, 5, 6, 19, and 21–23 is affirmed.
Appeal 2019-001473
Application 12/168,740

8
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED