Ex Parte Moffitt et al

Patent Trial and Appeal BoardDec 20, 2016

12204114 (P.T.A.B. Dec. 20, 2016)

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. 12/204,114 09/04/2008 Michael Moffitt 6279.120US1 4412 45458 7590 12/22/2016 smwfPtMan t t tndrf.ro & wofnnnfr/rnf EXAMINER PO BOX 2938 DIETRICH, JOSEPH M MINNEAPOLIS, MN 55402 ART UNIT PAPER NUMBER 3762 NOTIFICATION DATE DELIVERY MODE 12/22/2016 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): uspto@slwip.com SLW @blackhillsip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL MOFFITT, DONGCHUL LEE, KERRY BRADLEY, and DAVID K.L. PETERSON Appeal 2015-001504 Application 12/204,1141 Technology Center 3700 Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and KENNETH G. SCHOPFER, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL The Appellants appeal under 35U.S.C. § 134 from the Examiner’s decision rejecting claims 1—29. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to the Appellants, “[t]he real party in interest in this appeal is Boston Scientific Neuromodulation Corporation.” Appeal Br. 2. Appeal 2015-001504 Application 12/204,114 STATEMENT OF THE CASE Claimed Subject Matter Claims 1 and 11 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A neurostimulation paddle lead, comprising: an elongated lead body having a proximal end, a distal end, and a longitudinal axis; a plurality of terminals carried by the proximal end of the lead body; a paddle-shaped membrane disposed on the distal end of the lead body; and a plurality of electrodes arranged on an exterior surface of the paddle-shaped membrane in electrical communication with the respective terminals, the plurality of electrodes comprising at least four columns of electrodes, each column extending along the paddle-shaped membrane in a longitudinal direction, the at least four electrode columns having at least two inner electrode columns and two outer electrode columns transversely flanking the at least two inner electrode columns, wherein one of the at least two inner electrode columns is offset from one of the two outer electrode columns in the longitudinal direction, such that a plurality of immediately adjacent electrodes in the one outer electrode column longitudinally span only one electrode in the one inner electrode column. Rejections I. Claims 1, 2, 9, 10, 23, and 27 are rejected under 35 U.S.C. § 103(a) as unpatentable over Erickson et al. (US 2002/0022873 Al, pub. Feb. 21, 2002, “Erickson”) and Garabedian et al. (US 7,590,454 B2, iss. Sept. 15, 2009, “Garabedian”). II. Claims 11—19, 22, 24, 25, 28, and 29 are rejected under 35 U.S.C. § 103(a) as unpatentable over Erickson, Garabedian, and Cross et al. (US 2002/0111661 Al, pub. Aug. 15, 2002, “Cross”). 2 Appeal 2015-001504 Application 12/204,114 III. Claims 3—8 and 26 are rejected under 35 U.S.C. § 103(a) as unpatentable over Erickson, Garabedian, and King (US 2006/0253182 Al, pub. Nov. 9, 2006). IV. Claims 20 and 21 are rejected under 35 U.S.C. § 103(a) as unpatentable over Erickson, Garabedian, Cross, and King. ANALYSIS Rejection I The Examiner finds that Erickson substantially teaches the neurostimulation paddle lead required by claim 1. See Final Act. 3^4. More particularly, the Examiner points to the embodiment of Erickson’s Figure 4, which is a laminotomy spinal cord stimulation lead, and finds that this embodiment includes two inner electrode columns (40) and two outer electrode columns (30a, 30c). Id. at 3; see also Erickson, para. 25. The Examiner does not rely on Erickson to disclose “a plurality of immediately adjacent electrodes in the one outer electrode column longitudinally span only one electrode in the one inner electrode column,” as recited in claim 1. The Examiner relies on Garabedian’s disclosure to remedy this deficiency. See Final Act. 4. The Examiner finds that Garabedian’s Figure 2 discloses “the top two electrodes in the outer columns . . . span only one electrode in the middle column.” Id. The Examiner concludes that it would have been obvious to modify the positioning of the electrode columns of Erickson’s paddle-type lead in light of Garabedian’s teaching because changing the location of the electrode columns along the paddle-type lead may deliver optimal therapy to a patient. See Ans. 3; see also Final Act. 4. 3 Appeal 2015-001504 Application 12/204,114 The Appellants argue persuasively that the Examiner’s conclusion of obviousness lacks properly articulated reasoning with some rational underpinning. See Appeal Br. 4—6. In this case, the Examiner seems to speculate that there may be a hypothetical patient that could benefit from modifying the positioning of the electrode columns of Erickson’s paddle- type lead to be arranged as recited in the limitation of claim 1, i.e., “a plurality of immediately adjacent electrodes in the one outer electrode column longitudinally span only one electrode in the one inner electrode column.” This suggestion, however, appears to be the result of impermissible hindsight. See Reply Br. 3. Further, we note that the Examiner cites to Garabedian at column 1, line 64 — column 2, line 4 (Ans. 3), which describes (emphasis added): The lead(s) are connected to the neurostimulator, which is then operated to test the effect of stimulation and adjust the parameters of the stimulation for optimal pain relief During this procedure, the patient provides verbal feedback regarding the presence of paresthesia over the pain area. Based on this feedback, the leadposition(s) may be adjusted and re-anchored if necessary. Any incisions are then closed to fully implant the system. From this description the Examiner determines “that it is well known that that [sic] different patients react to stimulation/therapy in different ways, and that it would be obvious to use different electrode configurations on different electrode leads in order to provide the most effective therapy possible.” Ans. 3. The Examiner’s determination suffers because the description in Garabedian does not: imply changing an electrode configuration offers the same or similar benefits as adjusting the parameters of the stimulation or adjusting/re-anchoring the lead position; and suggest modifying an electrode 4 Appeal 2015-001504 Application 12/204,114 configuration with any and all electrode configurations merely because they are different. Based on the foregoing reasons, we determine that the Examiner’s conclusion fails to include adequate evidence and/or technical reasoning to explain why a person of ordinary skill in the art would re-position or reconfigure the electrode columns of Erickson’s paddle-type lead in view of the positioning of Garabedian’s electrode columns. Thus, the Examiner’s rejection of independent claim 1, and dependent claims 2, 9, 10, 23, and 27, as unpatentable over Erickson and Garabedian is not sustained. Rejections II—IV The remaining rejections rely on the same inadequately supported reasoning as discussed above and are not remedied by the Examiner’s additional findings based on Cross and/or King or the additional reasoning provided in the rejections. Thus, the Examiner’s rejections of claims 3—8, 11—22, 24—26, 28, and 29 are not sustained. DECISION We REVERSE the Examiner’s decision rejecting claims 1—29. REVERSED 5