Kerry Bradley et al.

Patent Trials and Appeals Board

Sep 20, 2019

11295168 - (D) (P.T.A.B. Sep. 20, 2019)

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.
11/295,168 12/05/2005 Kerry Bradley BSNC-1-418.0 7430
50638 7590 09/20/2019
Boston Scientific Neuromodulation Corp.
c/o Lowe Graham Jones
701 Fifth Avenue
Suite 4800
Seattle, WA 98104
EXAMINER
D ABREU, MICHAEL JOSEPH
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
09/20/2019 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):
patentdocketing@lowegrahamjones.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KERRY BRADLEY, LJUBOMIR MANOLA, and
JAN HOLSHEIMER
____________

Appeal 2018-003598
Application 11/295,168
Technology Center 3700
____________

Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
RICHARD H. MARSCHALL, Administrative Patent Judges.

MARSCHALL, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s rejection of claims 1–19 and 21–23. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We refer to the named inventors collectively as “Appellant.” According to
Appellant, the real party in interest is Boston Scientific Neuromodulation
Corporation. Appeal Br. 2.
Appeal 2018-003598
Application 11/295,168

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THE CLAIMED SUBJECT MATTER
The claimed subject matter “relates to therapeutic electrical
stimulation systems and methods and, more specifically, relates to activating
electrodes in an implanted stimulator device.” Spec. ¶ 2. Claims 1 and 11
are independent. Claim 1 is reproduced below.
1. A method of using a plurality of electrodes of a
stimulator device implanted in a patient, the method
comprising:
providing a stimulator device comprising a plurality of
electrodes, wherein the stimulator device is implanted in a
patient;
taking a first type of measurement for each of the
plurality of electrodes of the stimulator device;
taking a second different type of measurement for each of
the plurality of electrodes of the stimulator device, wherein the
measurements are indicative of the ability of the respective
electrode if activated to provide useful therapy to the patient in
which the stimulator device is implanted;
applying a first weight to the first type of measurements
to respectively arrive at first weighted measurements for the
respective electrodes;
applying a second weight to the second type of
measurements to respectively arrive at second weighted
measurements for the respective electrodes;
computing a function of the first and second weighted
measurements to arrive at a value;
using the value to determine a subset of the electrodes;
and activating at least one electrode of the subset of the
electrodes to deliver therapy to the patient.
Appeal Br. 20 (Claims App.).

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THE REJECTIONS
Appellant appeals from the following rejections:
1. Claims 1–4 under 35 U.S.C. § 103(a) as unpatentable over
Bradley,2 Tu,3 and Netherly.4
2. Claims 5 and 21–23 under 35 U.S.C. § 103(a) as unpatentable over
Bradley, Tu, Netherly, and Faltys.5
ANALYSIS
Independent Claims 1 and 11
Claims 1 and 11 require “applying a first weight to the first type of
measurements to respectively arrive at first weighted measurements for the
respective electrodes,” and a similar limitation directed to “applying a
second weight.” Appeal Br. 20, 22 (Claims App.). The Examiner finds that
Bradley discloses most of the limitations of claims 1 and 11, but “fails to
expressly disclose applying a first and second weight to the first and second
type of measurements.” Final Act. 3. The Examiner finds that “Tu teaches
detection of both monopolar and bipolar measurements and the application
of a first and second weight to the measurements in the form of
automatically eliminating artifacts via known methods in order to ensure the
impedance measurements are not contaminated.” Id. at 4. The Examiner
further finds that “Netherly teaches the application of weights or filters to
remove the noise in the monopolar or bipolar impedance measurements.”

2 U.S. Patent Publication No. 2003/0139781 A1, published July 24, 2003
(“Bradley”).
3 U.S. Patent Publication No. 2003/0088189 A1, published May 8, 2003
(“Tu”).
4 U.S. Patent No. 6,007,532, issued December 28, 1999 (“Netherly”).
5 U.S. Patent No. 5,626,629, issued May 6, 1997 (“Faltys”).
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Id. (citing Netherly, 18:61–19:20). The Examiner determined that “it would
have been an obvious design choice to one of ordinary skill in the art at the
time of the invention to incorporate a similar application of a filter or weight
to the signal which would allow the impedance signals to be denoised with
the removal of any artifacts, so that the following analysis taught by Bradley
would not be negatively affected by those invalid values.” Id.
Appellant argues that neither Tu nor Netherly mention or otherwise
suggest applying a weight to measurements. App. Br. 9–11. As to Tu,
Appellant argues that the portion of Tu the Examiner appears to rely upon6
“only requires repetition of measurement,” which does not involve applying
a weight to reduce noise. Id. at 9. As to Netherly, Appellant argues that
even if it does disclose filtering, “there are many forms of filtering and many
of them do not use the application” of weights to measurements as claimed.
Id. at 10. As an example, Appellant contends that filtering may use
averaging of measurements, which does not involve weighting. Id.
In the Answer, the Examiner “notes that although the term ‘weight’ is
not used, or a specific weight isn’t actively applied, the meaning of the term
‘weight’ is broader than what the term would be expected to mean.” Ans. 2.
The Examiner cites to portions of the Specification, and concludes, “there
are many different logical ways to arrive at a value for each of the
electrodes, and disclosure of a weighted sum should not be understood as
limiting.” Id. at 3 (citing Spec. ¶¶ 78, 79, 86). The Examiner finds that in

6 Appellant notes that the Examiner did not cite any specific portion of Tu in
support of the finding regarding Tu, but the Examiner acknowledges in the
Answer that Appellant correctly focus on Tu’s paragraph 52. Appeal Br. 9;
Ans. 2.
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Tu and Netherly, “‘weighting’ is occurring of impedance values” based on
the Examiner’s construction of “weight.” Id. As to Tu, the Examiner finds
that Tu discloses “a fast analysis based on a plurality of measurements
which are weighted purposely to eliminate artifacts.” Id. at 4. As to
Netherly, the Examiner finds that detecting impedances “through” noise
“must be overcome by some sort of filter resulting in a ‘weight’ applied to
the originally measured impedance data.” Id. at 4–5.
We agree with Appellant that the Examiner has not adequately
supported the finding that either Tu or Netherly discloses the weighting
limitations of claims 1 and 11. As to claim construction, although the
Examiner states that “weight” means something “broader than what the term
would be expected to mean,” the Examiner does not adopt a specific
construction much less support a specific construction with cites to the
record or other evidence. Ans. 2; see also id. at 3 (determining that
“weighted sum” approach “should not be understood as limiting” but not
providing an explicit construction). The Specification describes weighting
as associating a numeric value to “measurements taken,” and applying that
value to these measurements as part of an equation that arrives at “a
weighted sum” of the measurements taken. Spec. ¶ 62. The Specification’s
paragraphs 78 and 79, relied on by the Examiner, similarly describe
weighing a “ratio” of measurements or “various measurements” taken. Id. at
¶¶ 78, 79. The Examiner refers to the Specification’s description of
“averaging the measurements,” but the Specification does not describe
averaging as a form of weighting the measurements as the claims describe.
Ans. 3 (citing Spec. ¶ 86). We agree with Appellant that “weight” in the
context of these claim limitations, which require arriving at “weighted
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measurements,” suggests that “weight” is a mathematical term applied to
first and second “type[s] of measurements.” Reply Br. 3. At a minimum,
“applying” a “weight” requires assigning a relative value to measurements
that indicates a preference (or lack of a preference) for those measurements
relative to other measurements. See, e.g., Spec. Fig. 10A.
Turning to the prior art the Examiner relies on, we agree with
Appellant that neither Tu nor Netherly mentions “weight” or “weighting” in
the portions relied on by the Examiner. Appeal Br. 9–10. Accordingly, the
references do not expressly disclose “applying” a “weight” as required by
claims 1 and 11. In addition, the Examiner has not supported adequately a
finding of inherency. As to Tu, the Examiner finding that Tu discloses “a
fast analysis based on a plurality of measurements” does not establish that
multiple measurements are necessarily weighted. See Ans. 4. As to
Netherly, the Examiner’s finding that Netherly filters noise does not suggest
that Netherly necessarily applies a weight in order to perform the filtering.
Id. at 4–5. As Appellant notes, there are other potential methods that Tu and
Netherly may employ to achieve their respective goals, such as averaging
measurements, without resorting to weighting the measurements. Appeal
Br. 9–10; Reply Br. 5–7. Under these circumstances, the Examiner does not
establish with sufficient evidence and analysis that the references inherently
disclose applying a weight to the measurements.
Because the Examiner did not support adequately the finding that Tu
or Netherly disclose “applying” a “weight” as required by claims 1 and 11,
the Examiner’s related determination that it would have been an “obvious
design choice” to add weighting to Bradley’s teachings lacks an adequate
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foundation. See Final Act. 4. Based on the foregoing, we do not sustain the
rejection of claims 1 and 11.
Dependent Claims
The Examiner’s rejections of the dependent claims rely on the same
findings that we discussed above in the context of independent claims 1 and
1, and do not rely on additional references in a manner that remedies the
deficiencies noted above. See Final Act. 4–5. Accordingly, we do not
sustain the rejection of dependent claims 2–10, 12–19, and 21–23, for the
same reasons discussed above.
DECISION
We reverse the decision of the Examiner to reject claims 1–19 and
21–23.
REVERSED