Ex Parte Harding et al

Patent Trials and Appeals Board

Jan 11, 2019

14181074 - (D) (P.T.A.B. Jan. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/181,074 02/14/2014
11870 7590
Medtronic Inc. (SSO)
Patent Department
710 Medtronic Parkway
MS: LC340
Minneapolis, MN 55432
01/15/2019
FIRST NAMED INVENTOR
William Harding
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.
C00002489USU2/IT10343.07l 1099
EXAMINER
BEHRINGER, LUTHER G
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
01/15/2019 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):
rs.patents.three@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM HARDING and SCOTT MARK 1
Appeal2018-000188
Application 14/181,074
Technology Center 3700
Before: JAMES P. CAL VE, MICHELLE R. OSINSKI, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-13, 21, and 22. We have jurisdiction under 35
U.S.C. § 6(b ).
We REVERSE.
1 The Appellant is Medtronic, Inc., which the Appeal Brief indicates is the
real party in interest. Appeal Br. 3.
Appeal 2018-000188
Application 14/181,07 4
CLAIMED SUBJECT MATTER
The claims are directed to a sensing and stimulation system with a
plurality of flexible arms that extend from a central hub. Spec. ,r 2. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A sensing and stimulation system, comprising:
a central hub;
a plurality of flexible arms extending from the central hub,
wherein each of the arms includes at least one electrode and at
least one sensor, and wherein each of the arms is configured to
perform sensing of biological responses and changes, and
electrically stimulating biological material using electrical
signals;
a remote control module configured to generate the
electrical signals with voltage and current levels sufficient to
provide pain therapy when delivered to the biological material
using at least one of the arms; and
a port configured to be alternatively connected to a remote
control module for wireless operation of the system and a leaded
connector for wired operation of the system.
REFERENCES RELIED ON BY THE EXAMINER
Scarantino
Organ
Strother '952
Callahan
Bourget
Peyser
Strother '692
Harshbarger
Hyde
US 6,402,689 B 1
US 6,768,921 B2
US 2007 /0123952 Al
US 2008/0177168 Al
US 2011/0082522 Al
US 2011/0152658 Al
US 8,165,692 B2
US 2014/0031952 Al
US 2014/0200496 Al
2
June 11, 2002
July 27, 2004
May 31, 2007
July 24, 2008
Apr. 7, 2011
June 23, 2011
Apr. 24, 2012
Jan.30,2014
July 17, 2014
Appeal 2018-000188
Application 14/181,07 4
REJECTIONS 2
(I) Claims 1, 3, 4, 7-11, and 21 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Organ and Strother '952.
(II) Claims 2 and 6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Organ, Strother '952, and Harshbarger.
(III) Claims 43 and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Organ, Strother '952, and Callahan.
(IV) Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Organ, Strother '952, Peyser, and Hyde.
(V) Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Organ, Strother '952, Strother '692, and Scarantino.
(VI) Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Organ, Strother '952, and Bourget.
ANALYSIS
Rejection(!): Claims 1, 3, 4, 7-11, and 21
The Examiner finds that Organ discloses many of the elements
required by claim 1, but relies on Strother '952 to teach "a remote control
module, 10, configured to generate the electrical signals with voltage and
current levels sufficient to provide pain therapy when delivered to the
2 Rejections of claims 23-25 under 35 U.S.C. §§ 112(a) and 103(a) (Final
Act. 4--5, 16-18) have been rendered moot by the cancellation of these
claims. See Advisory Action 1 ( dated June 23, 2017, hereinafter "Advisory
Act."); see also Amendment After Final ( dated June 8, 201 7, hereinafter
"After-Final Amendment"). A rejection of claims 1-13 and 21-25 under 35
U.S.C. § 112(b) (Final Act. 5---6) has been withdrawn based on entry of the
After-Final Amendment. See Advisory Act. 1-2; see also Ans. 12.
3 This rejection of claim 4 is an alternative to the rejection of claim 4 in
Rejection (I). See Final Act. 12-13.
3
Appeal 2018-000188
Application 14/181,07 4
biological material" along with the recited port and connector. Final Act. 7-
9.
Appellant contends that Organ teaches a device that detects breast
cancer via impedance measurement, and, in light of Organ's objective,
(i) the Examiner has not established a sufficient reason for the proposed
modification, (ii) the proposed modification would undermine Organ's
purpose, and (iii) the Examiner has not established that the modified system
would provide pain therapy. Appeal Br. 6-11. With respect to undermining
the purpose of Organ's device, Appellant contends that implementation of
the hardware and flow of electrical current used in Strother '952 would
interfere with the impedance measurements performed by Organ. Id. at 9-
1 1.
The Examiner responds by explaining that the rejection relies on
Strother '952 only to teach the use of a remote control and connection port,
not to teach the treatment of pain therapy. Ans. 15-16. In this regard, the
Examiner states, "[ w ]hile the modified Organ in view of Strother device
could be used as a pain modification therapy device, this question does not
appear to be germane to the question of obviousness." Id. at 16.
Appellant replies that, by omitting any modification to Organ's
system to provide treatment of pain, the Examiner's position in the Answer
appears to be different than the position taken in the Final Action. Reply Br.
4--5. In particular, Appellant notes that the rationale set forth in the Answer
(restating the rejections in the Final Office Action) specifically mentions
treatment of pain as part of the reason for modifying the device of Organ.
Id. at 5 (citing Ans. 4); see also Final Act. 8. Appellant then contends, "[t]o
the extent that the Strother reference is not relied upon for teachings relating
to neurostimulation, the proposed combination would not correspond to the
4
Appeal 2018-000188
Application 14/181,07 4
claim limitations and would not provide the alleged neurostimulation-based
benefit." Reply Br. 6. Thus, Appellant contends that without modifying the
device disclosed by Organ to treat pain, this device would not perform this
function. 4
We agree with Appellant that the Examiner changed position in
response to the arguments set forth in the Appeal Brief because, as Appellant
contends, the original statement of the rejection appears to modify the device
disclosed by Organ to add the capability of providing pain treatment. Final
Act. 8 ("it would have been obvious to a person having ordinary skill in the
art before the effective filing date of the claimed invention to modify Organ
to include a remote control module configured to generate the electrical
signals with voltage and current levels sufficient to provide pain therapy
when delivered to the biological material."). In contrast, in the Answer, the
Examiner explains that the rejection does not propose to modify the device
of Organ this way. See Ans. 15 ("The feature of pain therapy modification
was not relied upon when making the combination of Organ in view of
Strother."). To the extent the rejection relies on Strother '952 to teach
supplying electrical signals to treat pain, the Examiner does not explain
sufficiently how providing such signals via the device disclosed by Organ
(which detects cancer through impedance measurements) is compatible with
the intended purpose of this device. To the extent the rejection relies on the
device disclosed by Organ, without modification, to provide treatment of
pain, the Examiner has not supported, by a preponderance of the evidence, a
4 Claim 1 recites, in pertinent part, "a remote control module configured to
generate the electrical signals with voltage and current levels sufficient to
provide pain therapy when delivered to the biological material." Appeal Br.
14 ( Claims App.).
5
Appeal 2018-000188
Application 14/181,07 4
finding that Organ's device performs this function. Specifically, the
Examiner does not establish that a device that is configured to measure
impedance in a way that leads to the detection of cancer ( as disclosed by
Organ) is also capable of providing treatment of pain. Absent sufficient
evidence for this finding, Appellant's contention that "there would not be
correspondence to the claim limitations [ of claim 1 ]" is persuasive. Reply
Br. 5. Therefore, we do not sustain the rejection of claim 1, and claims 3, 4,
7-11, and 21 depending therefrom, as unpatentable over Organ and Strother
'952.
Rejections (11)-(VI): Claims 2, 4-6, 12, 13, and 22
The Examiner's use of Harshbarger, Callahan, Peyser, Hyde, Strother
'692, Scarantino, and Bourget does not remedy the deficiencies discussed
above regarding Rejection (I). See Final Act. 11-16.
DECISION
The Examiner's decision to reject claims 1-13, 21, and 22 is reversed.
REVERSED
6