Ex Parte King et alDownload PDFPatent Trial and Appeal BoardJan 11, 201311810943 (P.T.A.B. Jan. 11, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte GARY W. KING, GABRIELA C. MIYAZAWA, JORDAN J. GREENBERG, and STEVEN M. GOETZ ____________________ Appeal 2010-012477 Application 11/810,943 Technology Center 3700 ____________________ Before: JOHN C. KERINS, BRADFORD E. KILE, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-012477 Application 11/810,943 2 STATEMENT OF CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-24 and 51-53 under 35 U.S.C. § 103(a) as being unpatentable over Barreras (US 5,895,416; iss. Apr. 20, 1999) and Goetz (US 2005/0060009 A1; pub. Mar. 17, 2005). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a new ground of rejection as to claims 51- 53. CLAIMED SUBJECT MATTER Claims 1 and 51 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method comprising delivering stimulation to a patient via at least one of three columns of electrodes implanted within the patient, wherein the stimulation is delivered according to a trial electrode combination from each of at least five groups of electrode combinations during a therapy evaluation period, wherein a first group is characterized by a rostral anode electrode pattern, a second group is characterized by a caudal anode electrode pattern, a third group is characterized by a first cathode disposed between two anodes, the first cathode and anodes being located in a same column of electrodes, a fourth group is characterized by a second cathode disposed between a first row of anodes and a second row of anodes, and a fifth group is characterized by a transverse electrode combination, wherein anodes of the transverse electrode combination are displaced substantially transversely relative to a third cathode of the transverse electrode combination, and a stimulation field resulting from delivery of stimulation via the transverse combination is oriented substantially transversely relative to a target tissue for the stimulation. Appeal 2010-012477 Application 11/810,943 3 OPINION Claim Construction Claims 1 and 51 are each directed to a method reciting a first group of electrode combinations characterized by a rostral anode electrode pattern and a second group of electrode combinations characterized by a caudal anode electrode pattern. The Examiner explains that the definitions for rostral anode pattern and caudal anode pattern are not recited in the claims and, applying the broadest reasonable interpretation in the light of the specification, “electrode patterns having a rostral anode--or rostral anodes-- are well within the broadest reasonable interpretation of the term [rostral anode pattern]” and “electrode patterns having a caudal anode--or caudal anodes--are well within the broadest reasonable interpretation of the term [caudal anode pattern].” Ans. 4. We disagree. During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). Appellants explain that the “disclosure defines a ‘rostral anode electrode pattern,’ which is the same as a ‘rostral anode electrode combination,’ as one in which the anodes of the combination are located above (i.e., closer to a distal end of the lead) the cathode(s) of the combination” (Reply Br. 7) and the “disclosure defined a ‘caudal anode electrode pattern,’ which is the same as a ‘caudal anode electrode combination,’ as one in which the anodes of the combination are located below the cathode(s) of the combination” (Reply Br. 8). Appellants contend that “an electrode combination characterized by a rostral anode electrode pattern is one in which all of the anodes are located above all of Appeal 2010-012477 Application 11/810,943 4 the cathodes” and “an electrode combination characterized by a caudal anode electrode pattern is one in which all of the anodes are located below all of the cathodes.” Id. Appellants’ Specification defines the first group of electrode combinations as “the presence of caudal anodes, in which the anodes of the combination are located below the cathode(s) of the combination” and defines the second group of electrode combinations as “the presence of rostral anodes, in which the anodes of the combination are located above the cathode(s) of the combination.” Spec. [0016], [0087]. The “first group” in the Specification appears to correspond to the “second group” in the Claims and the “second group” in the Specification appears to correspond to the “first group” in the Claims. When describing the rostral electrode pattern and the caudal electrode pattern, the Specification does not simply state that “anodes” or “a portion of the anodes” are above or below cathode(s). Rather, the Specification states that “the anodes of the combination are located above the cathode(s) of the combination” for the rostral electrode pattern and that “the anodes of the combination are located below the cathode(s) of the combination” for the caudal electrode pattern. Spec. [0016], [0086] (emphasis added). For these reasons, we agree with Appellants that the Specification defines the rostral anode electrode pattern as requiring all of the anodes to be located above the cathode(s) and defines the caudal anode electrode pattern as requiring all of the anodes to be located below the cathodes. Appeal 2010-012477 Application 11/810,943 5 Obviousness Initially, the Examiner finds that Barreras discloses the claimed first and second groups. Ans. 4. The Examiner explains that in Barreras “a first group is characterized by a rostral anode electrode pattern . . . by assigning an anode as 77 or 71 (fig. 12)” and “a second group is characterized by a caudal anode electrode pattern . . . by assigning an anode as 79 or 73 (fig. 12).” Id. However, as correctly pointed out by Appellants, Barreras does not explicitly disclose the claimed rostral or caudal anode electrode patterns in Figure 12. App. Br. 9, 10. None of the electric fields “A,” “B,” or “C” described relative to Figure 12 include all of the anodes above the cathode(s) to form a rostral electrode pattern or all of the anodes below the cathode(s) to form a caudal electrode pattern. In view of the lack of explicit disclosure of the rostral and caudal electrode patterns in Barreras, the Examiner explains that “Barreras, Sr. et al. discloses that ‘[e]ach electrode 71-79 in each lead 61-63 can be programmed positive (anode) or negative (cathode) . . . and ‘[i]n this example, only three electric fields are shown but it is obvious that many more are possible.’” Ans. 14, 15. The Examiner further explains that the “electric field ‘B’ of figure 8, where distal electrode 44 is programmed in a rostral anode electrode pattern suggest[s] it is an electrode configuration that is well known in the art” (Ans. 14) and the “electric field ‘C’ of figure 8, where proximal electrode 46 is programmed in a caudal anode electrode pattern suggest[s] it is an electrode configuration that is well known in the art” (Ans. 15). Appellants contend that electric field “B” in Figure 8 does not include a rostral anode pattern because all of the anodes (41, 43, 44) of the combination are not above the cathode (42) of the combination. App. Br. 14. Appeal 2010-012477 Application 11/810,943 6 Similarly, Appellants contend that electric field “C” in Figure 8 does not include a caudal anode pattern because all of the anodes (41, 43, 46) of the combination are not below the cathode (42) of the combination. App. Br. 15-16. We agree. The electric fields “B” and “C” in Figure 8 of Barreras each include an anode (41) above the cathode (42) and an anode (43) below the cathode. The Examiner reasons, that Since Barreras, Sr. et al. discloses only nine electrodes 71-79 and that they can only be positive (anode), negative (cathode) or an open circuit, it would have been obvious to one of ordinary skill in the art at the time the invention was made to try the specific groups of electrode combinations because there are a finite number of identified, predictable solutions with a reasonable expectation of success. Ans. 17. Such an approach justifies a legal conclusion of obviousness only if the evidence permits the Examiner to find that one of ordinary skill in the art would have had a reasonable expectation of success. However, to have a reasonable expectation of success, one must be motivated to do more than merely to ‘vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result, where the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful.’ Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (quoting In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988)). Based on the Examiner’s findings and reasoning, we are not convinced that the claimed arrangement would have been obvious to try. As noted above, Figure 12 of Barreras does not disclose a rostral electrode pattern including all of the anodes above the cathode(s) or a caudal electrode pattern including all of the anodes below the cathode(s). Figure 8 of Appeal 2010-012477 Application 11/810,943 7 Barreras also fails to disclose a rostral anode electrode pattern in electric field “B” and a caudal anode electrode pattern in in electric field “C.” The mere fact that a finite number of possible electrode patterns exists in Figure 12 of Barreras is not, by itself, sufficient evidence that the claimed arrangement would have been obvious to try. The Examiner has not identified anything in the combined teachings of Barreras and Goetz that indicates which of the many possible electrode patterns, and further which of the many possible groups of electrode patterns, are likely to be successful. The Examiner appears to simply suggest trying each of the numerous possible choices until a successful result is achieved. For these reasons, we do not sustain the Examiner’s rejection of claims 1-24 and 51-53. New Ground – Non-Statutory Subject Matter Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection of claims 51-53 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Section 101 defines the subject matter that may be patented under the Patent Act: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. Supreme Court precedents “provide three specific exceptions to § 101’s broad patent-eligibility principles: ‘laws of nature, physical phenomena, and abstract ideas.”’ Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010) (quoting Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)). The Supreme Court’s “precedents establish that the machine-or- transformation test is a useful and important clue, an investigative tool, for Appeal 2010-012477 Application 11/810,943 8 determining whether some claimed inventions are [patent-eligible] processes under § 101.” Bilski at 3227. Claim 51 recites “selecting a therapy metric” and “selecting at least one group from a set of at least five groups of electrode combinations that optimizes the therapy metric.” Claim 51 is not executed by a particular machine or apparatus. Moreover, a machine or apparatus is not necessary to perform the steps recited in claim 51. Performance of the method steps of claim 51 does not result in the transformation of an article. The steps of claim 51 merely require the selection of a group of electrode combinations and are capable of being performed by human thought alone. Although it is acknowledged that patent eligibility under § 101 is a course filter and that disqualifying abstractness of a claim must be manifest, that does not compel a conclusion that there is never a valid basis to hold that a claim is simply too abstract to qualify as patent eligible. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011); see also Research Corp. Techs, Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010) and Classen Immunotherapies, Inc. v. Biogen Idec et al., 659 F.3d 1057 (Fed. Cir. 2011). Here, the steps of “selecting a therapy metric” and “selecting at least one group from a set of at least five groups of electrode combinations that optimizes the therapy metric” simply require a mental process of “selecting” without any further action and are capable of being performed by human thought alone – which is merely an abstract idea. The method of claim 51 is directed to non-statutory subject matter. See CyberSource, at 1373. (“a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101.”). Appeal 2010-012477 Application 11/810,943 9 Claims 52 and 53 depend from claim 51 and are also directed to non- statutory subject matter for the reasons set forth above regarding claim 51. Claim 52 requires “reviewing a data structure comprising at least one electrode combination from each of the at least five groups and associated metric values” and, similar to claim 51, is capable of being performed by human thought alone. Claim 53 merely recites that “the set of at least five groups comprises a sixth group of electrode combinations characterized by an off-center cathode.” DECISION We REVERSE the Examiner’s decision to reject claims 1-24 and 51- 53. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection of claims 51-53 under 35 U.S.C. § 101. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . Appeal 2010-012477 Application 11/810,943 10 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . 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). REVERSED; 37 C.F.R. 41.50(b) Klh Copy with citationCopy as parenthetical citation