Ex Parte Moffitt et al

Patent Trial and Appeal Board

Nov 9, 2017

13470326 (P.T.A.B. Nov. 9, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
BSNC-l-453.2 1068
EXAMINER
WEHRHEIM, LINDSEY GAIL
ART UNIT PAPER NUMBER
3762
MAIL DATE DELIVERY MODE
13/470,326 05/13/2012
50638 7590 11/09/2017
Boston Scientific Neuromodulation Corp.
c/o Lowe Graham Jones
701 Fifth Avenue
Suite 4800
Seattle, WA 98104
Michael A. Moffitt
11/09/2017 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 MICHAEL A. MOFFITT,
SRIDHAR KOTHANDARAMAN, and
DAVID K.L. PETERSON
Appeal 2015-001339
Application 13/470,326
Technology Center 3700
Before LINDA E. HORNER, MITCHELL G. WEATHERLY, and
ERIC C. JESCHKE, Administrative Patent Judges.
WEATHERLY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the decision of the
Examiner rejecting claims 21—38. Claims 1—20 and 39—54 are cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The claims are directed to a management of stimulation safety limits
in a neurostimulation system. Spec. 12. Claim 21, which is the only
independent claim, is reproduced below and representative of the claimed
subject matter:
21. A neurostimulation system for concurrent use
with different sets of electrodes, comprising:
Appeal 2015-001339
Application 13/470,326
a neurostimulator configured for delivering
electrical stimulation energy to a tissue region in
accordance with a stimulation parameter, thereby injecting
a charge into the tissue region at the electrode sets;
an external control device configured for
programming the neurostimulator with the stimulation
parameter; and
control circuitry configured for determining a value
of the charge injected into the tissue region at each of the
electrode sets by the delivered electrical stimulation
energy, and for subsequently directly controlling the tissue
charge injection independently at each of the electrode sets
respectively based on the determined tissue charge
injection values.
REFERENCES
The Examiner relies upon the following evidence:
Swartz
Meadows
Butson
Armstrong
US 5,470,347
US 6,516,227 B1
US 2007/0288064 A1
US 2008/0269839 A1
Nov. 28, 1995
Feb. 4, 2003
Dec. 13, 2007
Oct. 30, 2008
REJECTIONS
Appellants seek our review of the following rejections:
Claims 21—31 and 36—38 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Meadows and Butson. Final Act. 3.
Claims 32 and 33 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Meadows, Butson, and Armstrong. Id. at 7.
Claims 34 and 35 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Meadows, Butson, Armstrong, and Swartz. Id. at 8.
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Appeal 2015-001339
Application 13/470,326
OPINION
The Examiner’s rejections of all claims depend upon a base
combination of teachings from Meadows and Butson. Final Act. 3—9. The
Examiner relies upon Butson as describing “control circuitry configured for
determining a value of the charge injected into the tissue region at each of
the electrode sets by the delivered electrical stimulation energy” as recited in
claim 21. Id. at 3 (citing Butson || 5, 6, 12, 42, 45, 118, 119, 150, and 181).
More specifically, the Examiner determined that Butson describes the
claimed control circuitry because Butson determines volume of activation,
which the Examiner determines to be a “value of the charge injected” as
recited in the claim. Ans. 4. Butson’s Figure 3 illustrates its “volume of
tissue activation” (“VOA”) as a volume of tissue that is activated by
electrical stimulation delivered by an implanted electrode. Butson 145.
Appellants contend that the Examiner has failed to establish that
Butson’s calculation of a VOA is a “value of the charge injected” as recited
in all claims. App. Br. 5. Appellants argue that “determining a value of the
charge injected” is described throughout the Specification as determining a
value expressed in terms of charge, for example, as “charge per phase,
charge density per phase, charge per second, charge density per second, or k-
value.” Reply Br. 2 (citing Spec. Tflf 10, 11, 74—80, 94, and 95).
The Federal Circuit recently described the standard for interpreting
claim language in Office proceedings as follows:
The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is not
whether the specification proscribes or precludes some broad
reading of the claim term adopted by the examiner. And it is not
simply an interpretation that is not inconsistent with the
specification. It is an interpretation that corresponds with what
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Application 13/470,326
and how the inventor describes his invention in the specification,
i.e., an interpretation that is “consistent with the specification.”
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (citation and
internal quotation marks omitted); see also In re Suitco Surface,
603 F.3d 1255, 1259-60 (Fed. Cir. 2010).
In re Smith Int’l, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017).
Appellants have successfully demonstrated that the claimed control
circuitry must determine a value of the charge injected into the tissue region
at each of the electrode sets as described in the cited portions of the
Specification. Additionally, we determine that the Examiner has not
sufficiently explained why Butson’s prediction of VOA equates to
“determining a value of the charge injected into the tissue region at each of
the electrode sets” as recited in claim 21. None of the portions of Butson
cited by the Examiner describes any direct link or relationship between VOA
and charge injected. See Butson || 5, 6, 12, 42, 45, 118, 119, 150, and 181
(failing to address expressly any aspect of charge injected by Butson’s
electrodes). The Examiner cites no other prior art as teaching the claimed
control circuitry. Accordingly, we cannot sustain the Examiner’s rejection
of claim 21 or any of its dependent claims 22—38.
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Application 13/470,326
DECISION
For the reasons stated above, we:
1. reverse the Examiner’s rejection of claims 21—31 and 36—38 as being
obvious over Meadows and Butson;
2. reverse the Examiner’s rejection of claims 32 and 33 as being obvious
over Meadows, Butson, and Armstrong; and
3. reverse the Examiner’s rejection of claims 34 and 35 as being obvious
over Meadows, Butson, Armstrong, and Swartz.
REVERSED
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