Pianca, Anne Margaret.

Patent Trials and Appeals Board

Jan 2, 2020

15005893 - (D) (P.T.A.B. Jan. 2, 2020)

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.
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Application 15/005,893

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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

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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.
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Application 15/005,893

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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.
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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.

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CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 103(a) Hegland, Stone 1–20

REVERSED