Anderson, Thomas A. et al.

Patent Trials and Appeals Board

Nov 26, 2019

14694910 - (D) (P.T.A.B. Nov. 26, 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.
14/694,910 04/23/2015 Thomas A. Anderson C0005334.USU2/
LG10126.L33
1578
27581 7590 11/26/2019
Medtronic, Inc. (CVG)
8200 Coral Sea Street NE.
MS: MVC22
MINNEAPOLIS, MN 55112
EXAMINER
EVANISKO, GEORGE ROBERT
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
11/26/2019 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):
rs.patents.five@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte THOMAS A. ANDERSON, TODD J. SHELDON,
MATTHEW D. BONNER, and NOELLE C. NEAFUS
____________________

Appeal 2019-002163
Application 14/694,910
Technology Center 3700
____________________

Before NINA L. MEDLOCK, PHILIP J. HOFFMANN,
MATTHEW S. MEYERS, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection of claims 1, 2, 4–19, 30, and 31. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“Medtronic, Inc. . . ., a subsidiary of Medtronic plc.” Appeal Br. 3.
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Application 14/694,910

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According to Appellant, the “disclosure relates to . . . cardiac pacing
using a leadless pacing device.” Spec. ¶ 2. Below, we reproduce
independent claim 1 as representative of the appealed claims.
1. A system comprising:
a leadless pacing device comprising:
a stimulation module configured to generate pacing
pulses;
a sensing module;
a processing module;
a housing comprising a conductive portion, wherein
the housing is configured to be implanted within a
chamber of a heart of a patient and encloses the
stimulation module, the sensing module, and the
processing module; and
a first electrode electrically coupled to the sensing
module and the stimulation module; and
a sensing extension extending from the housing, a
proximal-most portion of the sensing extension being curved, the
sensing extension comprising:
a self-supporting body extending from the housing;
and
a second electrode carried by the self-supporting
body at the proximal-most portion of the sensing extension
that is curved, wherein the second electrode is electrically
connected to the sensing module and the stimulation
module via the conductive portion of the housing,
wherein the processing module is configured to control the
sensing module to sense electrical cardiac activity via the second
electrode.

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Application 14/694,910

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REJECTION AND PRIOR ART
The Examiner rejects claims 1, 2, 4–19, and 30 under 35 U.S.C. § 103
as unpatentable over Dianaty et al. (US 2013/0345770 A1, pub. Dec. 26,
2013) (“Dianaty”).

ANALYSIS
As set forth above, independent claim 1 recites, in relevant part,
1. A system comprising:
a leadless pacing device comprising . . . a housing . . .; and
a sensing extension extending from the housing, a
proximal-most portion of the sensing extension being curved, the
sensing extension comprising:
a self-supporting body extending from the housing;
and
a second electrode carried by the self-supporting
body at the proximal-most portion of the sensing extension
that is curved, wherein the second electrode is electrically
connected to the sensing module and the stimulation
module via the conductive portion of the housing.
Appeal Br., Claims App. (emphases added). As shown in Dianaty’s
Figure 1A, a leadless implantable medical device (LIMD) 100 includes
shaped intra-cardiac (IC) device extension 103 extending from housing 102.
Dianaty Fig. 1A, ¶ 24. Electrode 105 is disposed in a center of
extension 103, in contrast to claim 1’s recitation that “a[n] . . . electrode [is]
carried . . . at the proximal-most portion of the sensing extension that is
curved”—i.e., a position proximate the end of extension 103. Id. ¶ 24;
Appeal Br., Claims App. (Claim 1) (emphasis added).
Nonetheless, according to the Examiner,
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[i]t would have been obvious . . . to have modified the system
and method as taught by Dianaty, with the sensing extension
having a proximal most curved sensing extension with a second
electrode—such as by [1)] adding a second electrode to
region 115, [2)] ending the extension before region 113, or [3)]
using a new extension with proximal most curved end with
electrode.
Final Action 3. Inasmuch as the Examiner does not support adequately that
it would have been obvious to implement any of the three modifications to
Dianaty discussed above, we do not sustain the rejection.
We begin with the Examiner’s determination that it would have been
obvious to modify Dianaty to “add[] a second electrode to region 115”—i.e.,
to add an electrode to the end portion of extension 103. Final Action 3. As
shown and described in Dianaty, Dianaty is directed to a LIMD with an
electrode disposed in the right atrial appendage (RAA) of the heart. Dianaty
Fig. 1A; ¶ 30. In contrast, Dianaty’s third curved segment 115 of
extension 103 is disposed in the heart’s superior vena cava (SVC). Id.
Without a compelling line of reasoning or citation of evidence by the
Examiner, there is inadequate support for the Examiner’s determination that
it would have been obvious either to move Dianaty’s electrode 105 to, or for
Dianaty’s device to include another electrode within, the heart’s SVC.
Our determination is consistent with Appellant’s argument that to the
extent that Dianaty discloses that the device may include one or more
electrodes 105 located on extension 103, Dianaty is best understood as
describing using additional electrodes 105 on, or moving electrode 105
along, a specific portion of extension 103 which is not at the end of the
sensing extension. Appeal Br. 7. More specifically, as Appellant points out,
Dianaty describes, with respect to the body of the IC device
extension 103, that “[o]ne or more electrodes 105 are located
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along the second curved segment 111. Optionally, the
electrode(s) may be provided in the region proximate to the
junction of the second curved segment 111 and the second linear
region 113. Optionally, one or more electrodes 105 may be
provided along the second linear region 113.”
Reply Br. 4, citing Dianaty para. 27. As shown in Dianaty’s Figure 1A,
second linear region 113 appears to be almost entirely within the heart’s
RAA, and in any case away from the end portion of extension 103. Further,
the Examiner does not cite any portion of Dianaty discussing using an
electrode in any other area of the heart other than the RAA, let alone using
an electrode in the heart’s SVC.
We now address the Examiner’s determination that it would have
been obvious to modify Dianaty to “end[] the extension before region 113,”
such that Dianaty’s electrode 105 would be disposed at the end portion of
extension 103. Final Action 3. Dianaty describes that “extension 103 forms
a stabilizing mechanism, to assist in holding the LIMD . . . in place.”
Dianaty ¶ 25 (bold omitted). Extension 103’s “region 113 merges with and
extends to a third segment 115,” which is disposed in the heart’s RAA. Id.
¶ 28 (bold omitted); Fig. 1A. “Th[is] configuration [shown] in F[igure] 1A
places . . . electrode 105 in the RAA to allow for right atrial pacing and
sensing. Th[is] configuration in F[igure] 1A also places the proximal
portion of the third curved segment 115 against a wall of the SVC to provide
overall stability to the LIMD.” Id. ¶ 30 (bold omitted). Based on these and
other portions of Dianaty, it appears that segment 115 provides stability to
the LIMD, and that such stability is important to Dianaty’s arrangement.
Thus, without further reasoning or citation of evidence by the Examiner, the
Examiner does not support adequately that it would have been obvious to
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remove segment 115 from Dianaty’s LIMD. See Appeal Br. 10; see Reply
Br. 5–6.
Finally, we address the Examiner’s determination that it would have
been obvious to modify Dianaty to “us[e] a new extension with proximal
most curved end with electrode”; i.e., such that another electrode would be
disposed at the end portion of another extension. Final Action 3. To the
extent that the Examiner proposes to use another extension with an electrode
which extends into the heart’s SVC, for reasons similar to those discussed
above, without a compelling line of reasoning or citation of evidence by the
Examiner, there is inadequate support for the Examiner’s proposed
additional extension and electrode. Alternatively, to the extent that the
Examiner proposes to add another extension with an electrode which
extends into the heart’s RAA and not into the heart’s SVC—i.e., where
extension 103 and electrode 105 already extend—the Examiner does not
provide reasoning or evidence adequate to support that there is any use for
an additional electrode in the RAA. See, e.g., Reply Br. 7.
Thus, based on the foregoing, the Examiner does not support
adequately that an obvious variation of Dianaty provides “a second electrode
carried by the self-supporting body at the proximal-most portion of the
sensing extension that is curved,” as claimed. Therefore, we do not sustain
the Examiner’s obviousness rejection of independent claim 1, or of claims 2
and 4–19 depending from claim 1. Inasmuch as independent claim 30
includes a similar recitation, we also do not sustain the Examiner’s
obviousness rejection of claim 30 or its dependent claim 31, both of which
the Examiner rejects with claim 1.

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CONCLUSION
We REVERSE the Examiner’s rejection of claims 1, 2, 4–19, 30,
and 31
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–19,
30, 31
103 Dianaty 1, 2, 4–19,
30, 31
Overall Outcome 1, 2, 4–19,
30, 31

REVERSED