Ex Parte Bolea et al

Patent Trial and Appeal Board

May 30, 2017

12835984 (P.T.A.B. May. 30, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/835,984 07/14/2010 Stephen L. Bolea 104292-1305 1268
138270 7590 06/01/2017
FOT FY Rr T ARDNFR T T P
EXAMINER
3000 K STREET N.W. HELLER, TAMMIE K
SUITE 600
WASHINGTON, DC 20007-5109 ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
06/01/2017 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):
ipdocketing @ foley. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN L. BOLEA, THOMAS B. HOEGH, BRUCE J.
PERSSON, ROBERT E. ATKINSON, and SCOTT T. MAZAR
Appeal 2016-003929
Application 12/835,9841
Technology Center 3700
Before DONALD E. ADAMS, RICHARD J. SMITH, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims 75—78, 86—90,
95—97, and 99-103 (Br. 4). Examiner entered rejection under 35 U.S.C.
§ 102(b). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as “Cyberonics, Inc.” (Br. 2).
Appeal 2016-003929
Application 12/835,984
STATEMENT OF THE CASE
Appellants disclose “devices[] and associated methods for treating
sleeping disorders” (Spec. 12). Claim 86 is representative and reproduced
below:
86. A device, comprising:
a neurostimulator for generating an electrical stimulus signal;
a stimulation lead connected to the neurostimulator, the stimulation lead
having a nerve cuff electrode for delivering the electrical stimulus signal to a
portion of a hypoglossal nerve; and
a respiration sensing lead connected to the neurostimulator for
sensing a bioimpedance signal, the respiration sensing lead having at least
one bio-impedance electrode defining, at least in part, a bio-impedance
vector on an anterior side of a thorax of a patient,
wherein the delivery of the electrical stimulus signal is provided as a
function of a sensed respiratory signal from the bio-impedance vector, and
wherein electrical stimulus signal delivery is initiated before an onset of a
future inspiratory phase and continued during the entire future inspiratory
phase without identifying the onset of the future inspiratory phase.
(Br. 13.)
The claims stand rejected as follows:
Claims 75—78, 86—90, 95—97, and 99-103 stand rejected under 35
U.S.C. § 102(b) as anticipated by Park.2
2 Park et al., US 2003/0153953 Al, published Aug. 14, 2003.
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Appeal 2016-003929
Application 12/835,984
ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that Park teaches Appellants’ claimed invention?
FACTUAL FINDINGS (FF)
FF 1. We adopt Examiner’s findings concerning the scope and content of
the prior art (Ans. 2—3 and 4—6; see Final Act. 2—3), and provide the
following findings for reference purposes.
FF 2. Park “relates to techniques for providing therapy to patients who
suffer from sleep apnea” (Park 13; see generally Ans. 3).
FF 3. Park’s Figure 10 is reproduced below:
Park’s “FIG. 10 is a schematic flow chart that illustrates actions of the
stimulation device when a pacing therapy fails to terminate sleep apnea, and
a more extreme level of intervention is appropriate” (Park 139).
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Appeal 2016-003929
Application 12/835,984
FF 4. Examiner finds that Park teaches every element of Appellants’
claimed invention (Ans. 2—3 and 4—6; see also Final Act. 2—3), including,
with reference to Park’s Fig. 10, a device that “monitors the respiration
signal 1006 to determine when the patient begins inspiration in each cycle of
a series of respiratory cycles[,] tracks the timing of inspiration onset to
predict the time of inspiration onset in subsequent cycles[, and] [w]hen
monitoring indicates a reliable respiratory timing 1008, [the device] predicts
the next inspiration onset time 1010 and anticipates the predicted inspiration
onset time by a predetermined onset interval 1012” (Park 1149; see Ans. 5).
FF 5. Park’s device “generates a series of neurostimulation pulses within a
single respiratory cycle 1014 beginning the onset interval time prior to the
predicted inspiration onset” and “delivers the neurostimulation pulses for a
preset number of respiration cycles 1016,” wherein “[n]eurostimulation may
be selected for consecutive cycles or with a predetermined number of
respiration cycles between a respiration cycle with neurostimulation” (Park
1150; see Ans. 5—6).
FF 6. Examiner finds that in Park’s device:
respiration is monitored for a predetermined series of
respiration cycles, this monitored respiration is used to predict a
future inspiratory onset, stimulus delivery is initiated before the
onset of this future inspiratory phase, and the stimulus is
delivered for a preset number of respiratory cycles before
cycling back to monitor respiration if the stimulation does not
terminate the apnea.
(Ans. 6.)
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Appeal 2016-003929
Application 12/835,984
ANALYSIS
With regard to Appellants’ claim 86, Examiner finds:
Park discloses a device, comprising: a neurostimulator 810 for
generating an electrical stimulus signal; a stimulation lead 812
connected to the neurostimulator, the stimulation lead having a
nerve cuff electrode 814 for delivering the electrical stimulus
signal to a portion of a hypoglossal nerve; and a respiration
sensing lead 816 connected to the neurostimulator for sensing a
bio-impedance signal, the respiration sensing lead having at
least one bio-impedance electrode defining, at least in part, a
bio-impedance vector on an anterior side of a thorax of a
patient; wherein the delivery of the electrical stimulus signal is
provided as a function of a sensed respiratory signal from the
bio-impedance vector, and wherein electrical stimulus signal
delivery is initiated before an onset of a future inspiratory phase
and continued during the entire future inspiratory phase
without identifying the onset of the future inspiratory phase (see
Figures 8-10 and paragraphs [0042], [0044], [0092], [0143],
[0144], and [0149]).
(Ans. 3.)
Appellants contend that “even if the timing of a future inspiration
onset is predicted by Park, the actual timing of that future inspiration onset
still must be identified so that it can be used to predict even future
inspiration onsets” (Br. 10 (emphasis removed)). According to Appellants,
“one of ordinary skill in the art would readily understand that the disclosed
Park apparatus and method must continuously identify inspiratory onsets of
past, current, and future respiratory cycles so as to reliably and continuously
‘predict the next inspiration onset time.’ (Para. [0149].)” (id. (emphasis
removed)). Therefore, Appellants’ contend, “[c]lear error thus exists in the
rejection because the rejection states that the Park method does not identity
the onset of a future inspiratory phase when the text of Park and a figure of
Park state the opposite” (id. (emphasis removed)). We are not persuaded.
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Appeal 2016-003929
Application 12/835,984
Park’s device provides for “[njeurostimulation [that] may be selected
for consecutive cycles or with a predetermined number of respiration cycles
between a respiration cycle with neurostimulation” (FF 5; see generally Ans.
6). Notwithstanding Appellants’ contention to the contrary, Appellants’
“comprising” claim does not preclude an additional step of “cycling back to
monitor respiration if the stimulation does not terminate the apnea” (FF 6; cf
Br. 10). Therefore, we are not persuaded by Appellants’ contention that
“one of ordinary skill in the art would readily understand that the disclosed
Park apparatus and method must continuously identify inspiratory onsets of
past, current, and future respiratory cycles so as to reliably and continuously
‘predict the next inspiration onset time.’ (Para. [0149].)” (Br. 10 (emphasis
removed)).
CONCLUSION OF LAW
The preponderance of evidence on this record supports Examiner’s
finding that Park teaches Appellants’ claimed invention. The rejection of
claim 86 under 35 U.S.C. § 102(b) as being anticipated by Park is affirmed.
Claims 75—78, 87—90, 95—97, and 99-103 are not separately argued and fall
with claim 86.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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