Pianca, Anne Margaret.Download PDFPatent Trials and Appeals BoardJan 2, 202015005893 - (D) (P.T.A.B. Jan. 2, 2020) Copy Citation 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. 15/005,893 01/25/2016 Anne Margaret Pianca BSNC-1-171.2 6034 50638 7590 01/02/2020 Boston Scientific Neuromodulation Corp. c/o Lowe Graham Jones 701 Fifth Avenue Suite 4800 Seattle, WA 98104 EXAMINER TEJANI, ANKIT D ART UNIT PAPER NUMBER 3792 NOTIFICATION DATE DELIVERY MODE 01/02/2020 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 ANNE MARGARET PIANCA ____________ Appeal 2019-003392 Application 15/005,893 Technology Center 3700 ____________ Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and SEAN P. O’HANLON, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–20 under 35 U.S.C. § 103(a) as unpatentable over Hegland (US 2006/0168805 A1, pub. Aug. 3, 2006) and Stone (US 2007/0203546 A1, pub. Aug. 30, 2007). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Boston Scientific Neuromodulation Corp. Appeal Br. 2. Appeal 2019-003392 Application 15/005,893 2 THE CLAIMED SUBJECT MATTER Claims 1, 11, and 17 are independent. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A pre-electrode, comprising: at least two thin-walled portions; and at least two thick-walled portions, wherein the thick- walled portions separate the thin-walled portions; wherein the pre-electrode is formed in the shape of a ring having an isodiametric outer diameter and a non-isodiametric inner diameter, wherein the thin-walled portions and the thick- walled portions are conductive. OPINION In rejecting claim 1, the Examiner finds that Hegland teaches “a pre- electrode 700 comprising at least two thin-walled portions (704, 706, 708, 710) and at least two thick-walled portions (726, 728, 730, 732), wherein the thick-walled portions separate the thin-walled portions (figure 8), wherein the pre-electrode is formed in the shape of a ring (figure 8).” Final Act. 4 (boldface omitted). The Examiner finds that, “prior to the bridge being removed, and corresponding to the intermediary step embodied in Applicant’s figure 6, the bridges (704, 706, 708, 710) and segments (726, 728, 730, 732) [of Hegland] form an isodiametric outer diameter.” Id. (boldface omitted). The Examiner also finds that “Hegland does not explicitly disclose wherein the ring has a non-isodiametric [inner] diameter.” Id. However, the Examiner finds that “Stone also describes pre-electrodes in the form of leads, including wherein a ring may have a non-isodiametric inner diameter.” Id. (citing Stone, Figs. 3B–3D, ¶¶ 148–150); see also id. at 3 (explaining that “Stone . . . was relied upon to demonstrate a non- isodiametric inner diameter”). The Examiner determines that it would have Appeal 2019-003392 Application 15/005,893 3 been obvious “to incorporate sections similar to those described by Stone when using a device similar to that described by Hegland, as doing so advantageously allows the resulting pre-electrodes to be further customized for a particular purpose and/or a particular location within the body.” Id. at 4–5. Appellant argues that the Examiner’s findings as to the disclosure of Stone are incorrect. Appeal Br. 8 (citing Final Act. 4). In particular, Appellant asserts that paragraph 28 of Stone “identifies the elements of Figures 3A–3D as leads and electrodes, not pre-electrodes.” Id. The Examiner responds, in the Answer, that “it is not Stone’s disclosure of leads or electrodes that is particularly germane to the Examiner’s argument, but rather Stone’s teaching of radially segmented electrodes which may be configured with a non-isodiametric inner diameter.” Ans. 10–11. According to the Examiner, “[w]hen non-isodiametric inner diameter electrodes, similar to those embodied by Stone, are sought after, the skilled artisan would be motivated to use Hegland’s method and start removing material from the inner surface of a central lumen, resulting in a pre- electrode with an isodiametric outer diameter and a non-isodiametric inner diameter.” Id. at 11. However, the Examiner has not adequately supported a finding that Stone teaches a pre-electrode ring having a non-isodiametric inner diameter, as required by claim 1. Stone teaches that “FIGS. 3A–3D are transverse cross-sections of example stimulation leads having one or more electrodes around the circumference of the lead.” Stone ¶ 147 (boldface omitted). For example, Figure 3B of Stone is reproduced below. Appeal 2019-003392 Application 15/005,893 4 Figure 3B of Stone depicts a cross-section of a stimulation lead having two electrodes 48 and 50. Id. ¶¶ 147, 1482 Stone teaches: FIG. 3B shows electrode level 46 which includes two electrodes 48 and 50. Each electrode 48 and 50 wraps approximately 170 degrees around the circumference of electrode level 46. Spaces of approximately 10 degrees are located between electrodes 48 and 50 to prevent inadvertent coupling of electrical current between the electrodes. Id. ¶ 148 (boldface omitted). We fail to see sufficient evidence to support the Examiner’s finding that Stone teaches a pre-electrode ring having a non- isodiametric inner diameter (see Final Act. 3–4; Ans. 10–11). We agree with Appellant that “Stone does not provide any identity or discussion of the thin lines separating the electrodes in Figures 3B–3D, but these lines appear to correspond to the outer surface of the non-conductive lead housing 30, 38 of Figures 2A–2B of Stone.” Appeal Br. 9. In other words, the Examiner does not identify, nor do we discern, any teaching that the electrodes depicted in Figures 3B–3D are formed in a ring having a non-isodiametric inner diameter. Instead, Stone’s figures appear to show independent segmented electrodes, each having an isodiametric inner diameter. 2 Figures 3B, 3C, and 3D of Stone show similar stimulation lead cross- sections. Appeal 2019-003392 Application 15/005,893 5 The Examiner’s conclusion of obviousness is based on a deficient finding as to the scope and content of Stone, namely, that Stone teaches a pre-electrode formed in a ring having a non-isodiametric inner diameter, as called for in claim 1. See Final Act. 3–4; Ans. 10–11. To the extent that the Examiner’s Answer may be proposing an alternative basis for concluding that the disputed limitation would have been obvious (see Ans. 9–10), this basis continues to appear to rely on a “combination of Hegland and Stone” (id. at 9) or otherwise lacks an adequate explanation of a reason with a rational evidentiary underpinning to explain why one of ordinary skill in the art would have been led to modify Hegland’s pre-electrode to have a non- isodiametric inner diameter. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007)). For the foregoing reasons, we are persuaded that the Examiner erred in concluding that the combination of Hegland and Stone renders obvious the subject matter of independent claim 1. Accordingly, we do not sustain the rejection of independent claim 1 and its dependent claims 2–10 under 35 U.S.C. § 103(a) as unpatentable over Hegland and Stone. Because the Examiner relies on the same deficient findings and reasoning in rejecting independent claims 11 and 17 (Final Act. 6–8), we also do not sustain the rejection of claims 11 and 17, and dependent claims 12–16 and 18–20, under 35 U.S.C. § 103(a) as unpatentable over Hegland and Stone. Appeal 2019-003392 Application 15/005,893 6 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 103(a) Hegland, Stone 1–20 REVERSED Copy with citationCopy as parenthetical citation