Ex Parte Gururaj et al

Patent Trial and Appeal Board

May 22, 2018

14311059 (P.T.A.B. May. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/311,059 06/20/2014
50638 7590 05/22/2018
Boston Scientific Neuromodulation Corp.
c/o Lowe Graham Jones
701 Fifth Avenue
Suite 4800
Seattle, WA 98104
FIRST NAMED INVENTOR
Kiran K. Gururaj
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.
BSNC-1-474.1 1014
EXAMINER
MEHL, PATRICK M
ART UNIT PAPER NUMBER
3737
MAILDATE DELIVERY MODE
05/22/2018 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 KIRAN K. GURURAJ, ROSS D. VENOOK,
MATTHEW LEE McDONALD, and JOSEPH M. BOCEK
Appeal2017-005433 1
Application 14/311,059
Technology Center 3700
Before FRANCISCO C. PRATS, JAMES A. WORTH, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims to methods in
which a magnetic resonance imaging (MRI) device is used to apply a
magnetic field to a patient having an implanted medical device. The
Examiner rejected the claims for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b)(l). We reverse.
1 Appellants state that the "real party in interest for this appeal is Boston
Scientific Neuromodulation Corporation. Boston Scientific
Neuromodulation Corporation, the assignee of the present patent application,
is a wholly-owned subsidiary of Boston Scientific Corporation." Appeal Br.
2.
Appeal2017-005433
Application 14/311,059
STATEMENT OF THE CASE
The Specification discloses that an MRI scan of a patient having an
implanted medical device such as a neurostimulator "may potentially cause
damage to patient tissue, malfunction or damage [of] the neurostimulator,
and/or discomfort to the patient." Spec. i-f 5.
To address that issue, Appellants' invention involves performing MRI
procedures in which, during the procedure, the magnetic field applied by the
MRI device is varied to produce a vibrational signature that is recognized by
the implanted device, thereby prompting the implanted device to switch to
an operational mode that is compatible with the MRI scan. Id. i-f 49.
Appellants' invention also involves the use of a distinct post-scan magnetic
field signature, which prompts the implanted device to switch back to its
normal operational mode. Id.
Claim 1, the only independent claim on appeal, reads as follows:
1. A method of automatically identifying a
predetermined signature in a time-varying magnetic field
generated by a magnetic resonance imaging (MRI) device,
compnsmg:
exposing a patient to the magnetic field, thereby inducing
mechanical vibrations in at least one component of a medical
device implanted in the patient;
executing a programmed, predetermined variation of
the time-varying magnetic field generated by the MRI device
to produce the predetermined signature in the induced
mechanical vibrations in the at least one component;
detecting a vibrational characteristic of the mechanical
vibrations induced in the at least one component;
analyzing the vibrational characteristic; and
identifying the predetermined signature of the magnetic
field based on the analyzed vibrational characteristic.
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Application 14/311,059
Appeal Br. 11 (emphasis added to show claim limitation at issue).
The following rejections are before us for review:
(1) Claims 1, 2, 10, 11, and 15-22, under 35 U.S.C. § 103(a) as being
unpatentable over Doerr2 (Ans. 3-5);
(2) Claims 3-9, under 35 U.S.C. § 103(a) as being unpatentable over
Doerr and Cooke3 (id. at 6-8);
(3) Claims 12-14, under 35 U.S.C. § 103(a) as being unpatentable
over Doerr and Buckingham4 (id. at 8);
(4) Claims 23 and 24, under 35 U.S.C. § 103(a) as being unpatentable
over Doerr and Sirrine5 (id. at 8-9); and
(5) Claims 25-28, under 35 U.S.C. § 103(a) as being unpatentable
over Doerr and Sumi6 (id. at 8-9).
STANDARD OF REVIEW
As stated in Jn re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden ... of presenting a
prima facie case of unpatentability ....
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
DISCUSSION
The Examiner's Prima Facie Case
In rejecting independent claim 1 over Doerr, the Examiner found that
Doerr taught or suggested a process having all of the steps and features of
2 US 2011/0152733 Al (published June 23, 2011).
3 US 2011/0270338 Al (published Nov. 3, 2011).
4 US 2009/0091465 Al (published Apr. 9, 2009).
5 US 7,487,679 B2 (issued Feb. 10, 2009).
6 US 2006/0173319 Al (published Aug. 3, 2006).
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Appeal2017-005433
Application 14/311,059
the claimed process, although the Examiner apparently found that Doerr' s
teachings were not disclosed in a manner that would anticipate claim 1.
Ans. 3--4; see also id. at 11 (noting withdrawal of anticipation rejection over
Doerr during prosecution).
Analysis
Having carefully considered the arguments and evidence advanced by
Appellants and the Examiner, Appellants persuade us that the Examiner has
not shown by a preponderance of the evidence that the process recited in
independent claim 1 would have been obvious in view of Doerr. In
particular, Appellants persuade us (see, e.g., Appeal Br. 6-7) that Doerr does
not teach or suggest claim 1 's step, emphasized above, of executing a
programmed, predetermined variation of the time-varying magnetic field
generated by the MRI device to produce a predetermined signature in the
mechanical vibrations induced in a component of the implanted device.
It is well settled that during examination, the PTO must interpret
terms in a claim using "the broadest reasonable meaning of the words in
their ordinary usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the
applicant's specification." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997) (emphasis added).
In the present case, the Examiner determines that, when given its
broadest reasonable interpretation consistent with the Specification, claim 1,
in reciting the step of executing a programmed, predetermined variation of
the time-varying magnetic field generated by the MRI device, encompasses
simply turning on the MRI machine. Ans. 3--4. In that regard, the Examiner
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Application 14/311,059
contends as follows:
[T]he application of any magnetic field, "such as turning a
magnetic field on" is interpreted as a "programmed,
predetermined variation of the time-varying magnetic fields
generated by the MRI device" [and] is capable to provide a
signal to any device sensing a varying magnetic field. Indeed,
turning on the static magnetic field is providing a time varying
magnetic field from the no field to the final static magnetic
field, inducing Lorentz forces as induced mechanical vibration
for the sensor, here a single pulse for switching on the MRI ....
Furthermore, Doerr teaches that the gradient and the static
magnetic fields are capable to induce vibrations with the
Lorentz sensor (Doerr [0039]). Therefore, the interpretation
provided by the examiner are based on the physical properties
of the device including the MRI and of the sensors.
Id. at 10.
We are not persuaded that the Examiner's claim interpretation is
reasonable. As seen above, claim 1 recites a first step of exposing a patient
to a magnetic field generated by an MRI device, which induces mechanical
vibrations in at least one component of a medical device implanted in the
patient. Appeal Br. 11.
Claim 1 subsequently recites "executing a programmed,
predetermined variation of the time-varying magnetic field generated by the
MRI device," which produces a predetermined signature in the mechanical
vibrations induced in the implanted device. Id. As noted above, Appellants'
Specification explains that varying the MRI's magnetic field signature can
be used to prompt the implanted device to switch to an operational mode
compatible with the MRI scan, and also be used to prompt the implanted
device to switch back to a normal operational mode once the scan is
completed. Spec. i-f 49.
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Application 14/311,059
Thus, because claim 1 first recites using an MRI device to apply a
magnetic field, and then recites executing a variation of that magnetic field,
we are not persuaded that the Examiner is reasonable in interpreting claim 1
as encompassing the single action of turning on the MRI device to generate a
magnetic field.
We acknowledge that Doerr' s device operates by a process similar to
that recited in Appellants' claim 1, in that the implanted device in Doerr
recognizes a magnetic field applied by an MRI device, which causes the
implanted device to switch to an MRI-compatible operational mode. See,
e.g., Doerr i-f 36 ("If a typical MRT vibration and/or oscillation is
recognized, the implant reacts with altered behavior, as it switches,
controlled by a CPU/control unit 250, into a pre-programmable MRT-safe
operating mode."). 7
Nonetheless, the Examiner does not identify, nor do we discern, any
specific teaching or disclosure in Doerr in which an already-applied
magnetic field is varied to produce a predetermined signature in the
vibration induced in the implanted device, in the manner recited in
Appellants' claim 1. Instead, the Examiner relies on the claim
interpretation, discussed above, in which the Examiner asserts that claim 1
encompasses simply turning on an MRI device, as taught in Doerr. As
discussed above, we do not find that claim interpretation to be reasonable.
In sum, for the reasons discussed, Appellants persuade us that the
Examiner has not shown by a preponderance of the evidence that the process
recited in Appellants' claim 1 would have been obvious in view of Doerr.
7 Doerr uses the terms "MRT" and "MRI" interchangeably. Doerr i-f 3.
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Application 14/311,059
We, therefore, reverse the Examiner's rejection of claim 1, and its dependent
claims 2, 10, 11, and 15-22 over Doerr.
Each of claims 3-9, 12-14, 23, 24, and 25-28 depends directly or
ultimately from claim 1. Appeal Br. 11-14. In rejecting those claims, the
Examiner cited Doerr for the teachings discussed above, and cited Cooke,
Buckingham, Sirrine, and Sumi as evidence that claims 3-9, 12-14, 23, 24,
and 25-28 recite obvious variations of the inventions recited in the claims
subject to the first ground of rejection, discussed above. Ans. 6-9. Because
the Examiner does not explain, nor do we discern, how or why the
additionally cited references remedy the deficiencies discussed above of
Doerr as to claim 1, we also reverse the Examiner's obviousness rejections
of claims 3-9, 12-14, 23, 24, and 25-28.
SUMMARY
For the reasons discussed, we reverse each of the Examiner's
obviousness rejections.
REVERSED
7