Ex Parte Whitehurst et al

Patent Trial and Appeal BoardDec 4, 2012

12358073 (P.T.A.B. Dec. 4, 2012)

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. 12/358,073 01/22/2009 Todd K. Whitehurst 07-00380-02 1850 71422 7590 12/04/2012 VISTA IP LAW GROUP LLP/BSC - NEUROMODULATION 2040 MAIN STREET, Suite 710 IRVINE, CA 92614 EXAMINER MANUEL, GEORGE C ART UNIT PAPER NUMBER 3762 MAIL DATE DELIVERY MODE 12/04/2012 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 TODD K. WHITEHURST, KRISTEN N. JAAX, RAFAEL CARBUNARU, GREG BALDWIN, BRETT SCHLEICHER, ANDREW DIGIORE, and ROGER HASTINGS ____________ Appeal 2011-011777 Application 12/358,073 Technology Center 3700 ____________ Before DONALD E. ADAMS, DEMETRA J. MILLS, and ULRIKE W. JENKS, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134 involves claims 1, 3, 4, 6, 9, 10, 12, 15, 16, and 18-25 (App. Br. 2; Ans. 3). 1 We have jurisdiction under 35 U.S.C. § 6(b). 1 Pending “[c]laims 2, 5, 13, 14, and 17 stand objected to for being based on rejected claims, but were found to recite patentable subject matter” (App. Br. 2; Ans. 3). Appeal 2011-011777 Application 12/358,073 2 STATEMENT OF THE CASE The claims are directed to a method of treating a patient with pancreatitis pain. Claim 1 is representative and is reproduced in the Claims Appendix of Appellants‟ Brief. Claims 1, 3, 4, 6, 9, 10, 12, 15, 16, and 18-25 stand rejected under the enablement/written description provision of 35 U.S.C. § 103(a) as unpatentable over Pyles. 2 We affirm. ISSUE Does the preponderance of evidence on this record support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 1. Pyles‟ “invention relates to spinal cord stimulation for treating[, inter alia,] … pancreatitis” (Pyles 1: ¶ [0002]; see also id. at ¶ [0020]; Ans. 4). FF 2. Pyles defines the “phrase „spinal cord stimulation‟ as … stimulation of any spinal nervous tissue” (id. at ¶ [0052]). FF 3. Pyles defines the phrase “‟spinal nervous tissue‟” as, inter alia, dorsal root, dorsal root ganglion, and dorsal column (id. at ¶ [0053]; Ans. 4 and 5). FF 4. Pyles‟ “system allows the patient to control the frequency of stimulation,” for example by “deliver[ing] electrical pulses on a substantially continuous basis … at an appropriate time” (id. at ¶ [0015]; Ans. 4-5). ANALYSIS The claims have not been argued separately and therefore stand or fall together. 37 C.F.R. § 41.37(c)(1)(iv). Claim 1 is representative. 2 Pyles, US 2010/0174339 A1, published July 8, 2010. Appeal 2011-011777 Application 12/358,073 3 Based on Pyles Examiner concludes that, at the time Appellants‟ invention was made, it would have been prima facie obvious “to treat a patient with pancreatitis pain using [Pyles] … stimulation system” (Ans. 5). We are not persuaded by Appellants‟ intimation that Pyles fails to suggest the application of a stimulus to a stimulation site within the scope of Appellants‟ claim 1 (App. Br. 3-4; Reply Br. 1-2; Cf. FF 3). Pyles expressly suggests a method of stimulating the dorsal root, dorsal root ganglion, and dorsal column to treat pancreatitis (FF 1-4). Therefore, we are not persuaded by Appellants‟ contention to the contrary (App. Br. 4-5; Reply Br. 2-3). CONCLUSION OF LAW The preponderance of evidence on this record supports a conclusion of obviousness. The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Pyles is affirmed. Claims 3, 4, 6, 9, 10, 12, 15, 16, and 18-25 are not separately argued and fall together with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED cdc