Ex Parte Bradley et al

Patent Trial and Appeal BoardMar 30, 2016

12606050 (P.T.A.B. Mar. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/606,050 10/26/2009 45458 7590 04/01/2016 SCHWEGMAN LUNDBERG & WOESSNER/BSC POBOX2938 MINNEAPOLIS, MN 55402 Kerry Bradley 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 6279.077US 1 2023 EXAMINER MALAMUD, DEBORAH LESLIE ART UNIT PAPER NUMBER 3766 NOTIFICATION DATE DELIVERY MODE 04/01/2016 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): uspto@slwip.com SLW@blackhillsip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KERRY BRADLEY, BRADLEY HERSHEY, and DONGCHUL LEE Appeal2013-004355 Application 12/606,050 Technology Center 3700 Before JOHN C. KERINS, BRANDON J. WARNER, and FREDERICK C. LANEY, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Kerry Bradley et al. (Appellants) appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final decision rejecting claims 1-10. Claims 11-20 are withdrawn from consideration. We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b). We REVERSE. THE INVENTION Appellants' invention relates to a method of stimulating nerve tissue. Claim 1 is illustrative and is reproduced below: Appeal2013-004355 Application 12/606,050 1. A method of stimulating nerve tissue, comprising: applying an electrical stimulus to at least one electrode adjacent the nerve tissue of a patient, the applied electrical stimulus comprising a plurality of pulses defined by a pulse width value and an amplitude value; increasing the pulse amplitude value or decreasing the pulse width value; and automatically decreasing the pulse width value in response to increasing the pulse amplitude value or automatically increasing the pulse amplitude value in response to decreasing the pulse width value in a manner that increases the intensity of the applied electrical stimulus. THE REJECTIONS The Examiner has rejected: (i) claims 1, 2, 4---6, and 8 under 35 U.S.C. Â§ 102(b) as being anticipated by Spanton (US 4,759,368, issued July 26, 1988); and (ii) claims 1, 3, 4, and 7-10 under 35 U.S.C. 102(b) as being anticipated by Erickson (US 7,359,751 Bl, issued Apr. 15, 2008). ANALYSIS Claims 1, 2, 4-6, and 8--Anticipation--Spanton The Examiner finds that Spanton discloses all limitations set forth in claim 1. Final Act. 4. Appellants contend that Spanton does not disclose "automatically decreasing the pulse width value in response to increasing the pulse amplitude value or automatically increasing the pulse amplitude value in response to decreasing the pulse width value in a manner that increases the 2 Appeal2013-004355 Application 12/606,050 intensity of the applied electrical stimulus." Appeal Br. 3. Appellants submit that the increase in intensity included in the claimed variations of pulse amplitude and pulse width is distinct from Spanton's static intensity resulting from movement along a strength-duration (S-D) curve. Id. at 4. In support of this position, Appellants point to Fig. 5 of their Specification illustrating "pulse amplitude-pulse width lines D 1-D4 having different trajectories than strength-duration (S-D) Curves 1 and 2." Id. The Examiner responds that "strength is equivalent to intensity," that amplitude is a component of strength, and thus Spanton's S-D curves illustrate changes in intensity. Ans. 5-6. In support, the Examiner cites a dictionary definition of intensity: "the quality or state of being intense; especially: extreme degree of strength, force, energy, or feeling." 1 Id. Additionally, the Examiner characterizes Spanton's S-D curves corresponding to different nerve fibers as showing "the identical trends as the instant appiication, and the exact reiationship required by the claims." Id. at 7. We find that Spanton does not disclose "automatically decreasing the pulse width value in response to increasing the pulse amplitude value or automatically increasing the pulse amplitude value in response to decreasing the pulse width value in a manner that increases the intensity of the applied electrical stimulus," as recited in the claim, because we do not agree that "strength" and "amplitude" are synonymous with the claim term "intensity" within the context of claim 1. Though "intensity" is not lexicographically 1 Intensity: Free Merriam-Webster Dictionary, http://www.merriam- webster.com/dictionary/intensity (last visited Dec. 11, 2012)). 3 Appeal2013-004355 Application 12/606,050 defined in the Specification, Appellants describe a situation in which the intensity of electrical energy conveyed through target nerve tissue is increased as a result of adjusting pulse amplitude and/or pulse width of the electrical energy relative to strength-duration curves. Spec. if 38. We understand this to mean that a plot representing the adjusting of pulse amplitude and/or pulse width in the claimed manner would not follow a known strength-duration curve. The Specification goes on to state that "[a]lthough the manual decrease of the pulse width is usually not associated with an increase in stimulation intensity, the accompanying increase in the pulse amplitude will effect the increase in stimulation intensity." Id. at if 42. Thus, we understand an increase in the intensity of the applied electrical stimulus to be a function of pulse amplitude and pulse width described by a curve further from the origin at all points relative to an S-D curve resulting from an increase/decrease of the puise width coupied with a corresponding inverseiy related decrease/increase of the pulse diameter, This is exemplified in Appellants' Figure 5 by line D, which represents operating with increased intensity relative to S-D Curve 2 in that figure. In contrast, Spanton's method describes modulating pulse amplitude and pulse width in a manner that approximates a strength-duration curve. Spanton, col. 4, lines 58---62. Though such approximation describes an inverse variation of pulse amplitude and pulse width relative to each other, movement along a particular strength-duration curve cannot result in an increased intensity relative to that curve. Thus, Spanton's modulation is not performed "in a manner that increases the intensity of the applied electrical stimulus," as claimed. Accordingly, we do not sustain the rejection of 4 Appeal2013-004355 Application 12/606,050 claim 1, and of claims 2, 4---6, and 8, depending therefrom, as being anticipated by Spanton. Claims 1, 3, 4, and 7-10--Anticipation--Erickson The rejection of these claims as anticipated by Erickson is based upon the same misunderstanding as to what the claims mean by increasing the intensity of the applied electrical stimulus as discussed above with respect to Spanton. Erickson essentially discloses inversely varying pulse width and pulse amplitude in accordance with a particular S-D curve, and the Examiner has not shown that Erickson inversely varies pulse amplitude and pulse width "in a manner that increases the intensity of the applied electrical stimulus," as claimed. Accordingly, the rejection of claims 1, 3, 4 and 7-10 as being anticipated by Erickson is likewise not sustained. DECISION The decision of the Examiner to reject claims 1-10 is reversed. REVERSED 5