Ex Parte King et al

Patent Trial and Appeal Board

Jan 11, 2013

11810943 (P.T.A.B. Jan. 11, 2013)

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

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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.

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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
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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.

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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.
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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
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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
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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.”).
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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. . . .
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(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)

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