Birkholz, Doug M. et al.

Patent Trials and Appeals Board

Oct 31, 2019

15278113 - (R) (P.T.A.B. Oct. 31, 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.
15/278,113 09/28/2016 Doug M. Birkholz 279.J75US3 1000
45458 7590 10/31/2019
SCHWEGMAN LUNDBERG & WOESSNER/BSC
PO BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
KABIR, ZAHED
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
10/31/2019 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):
SLW@blackhillsip.com
uspto@slwip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUG M. BIRKHOLZ, DOUGLAS J. BRANDNER,
DOUGLAS J. GIFFORD, DAVID J. TERNES, and
WILLIAM J. LINDER
Appeal 2019-000270
Application 15/278,113
Technology Center 3700
BEFORE EDWARD A. BROWN, JAMES P. CALVE, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Appellant1 filed a Request for Rehearing (“Request”) of the Decision
on Appeal dated July 1, 2019 (“Decision”) in this Application. The Request

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 Cardiac Pacemakers,
Inc. Appeal Br. 2.
Appeal 2019-000270
Application 15/278,113
2
seeks reconsideration of the Board’s entry of a new ground of rejection
against claims 2 and 17.2 We GRANT THE REQUEST.
OPINION
The Decision entered a new ground of rejection against claims 2 and
17, under 35 U.S.C. § 103(a), as unpatentable over Moffit3. Dec. 11–13.
Appellant contends that, based on a Statement of Common Ownership
included in the Request, Moffit is disqualified as a reference for the purposes
of 35 U.S.C. § 103. Req. Reh’g 1–2; see also 35 U.S.C. § 103(c).
Moffit was filed on May 13, 2012 and published on November 15,
2012. Moffit claims the benefit of an earlier filing date, under 35 U.S.C.
§ 119(e), from provisional application number 61/486,120, which was filed
on May 13, 2011.4
The present application was filed on September 28, 2016, and claims
the benefit of provisional application number 61/612,833 (hereinafter
“Appellant’s provisional application”), which was filed on March 19, 2012.5
Appellant asserts Appellant’s provisional application adequately
supports the claims on appeal because “[t]he specification and drawings of

2 The only other standing rejection against the claims is an obviousness-type
double patenting (ODP) rejection of claims 2–21 based on claims 1, 9, 11,
and 16–18 of Birkholz ’521 and Gandhi that is not contested as part of this
Request. See Decision 13; Request 3.
3 US 2012/0290040 A1, published November 15, 2012.
4 Appellant does not contest that Moffit qualifies as prior art based on the
filing date of provisional application number 61/486,120.
5 The present application is a continuation application of another application
(U.S. serial number 14/612,799), itself a continuation application of another
application (U.S. serial number 13/780,903), which claims the benefit of
(and was filed within one year of) provisional application number
61/486,120.
Appeal 2019-000270
Application 15/278,113
3
the provisional application are the same as the specification and drawings of
the present application, but for the claim of priority found in paragraph
[0001].” Appellant’s assertion that the specifications and drawings in these
two applications are practically identical appears correct. Accordingly,
based on the present Application receiving the benefit of Appellant’s
provisional application filing date, Moffit qualifies as prior art only under
35 U.S.C. § 102(e), i.e., by virtue of its filing date.
In the Request, Appellant submitted a Statement of Common
Ownership indicating that, at the time the claimed invention was made, the
subject matter of Moffit and the claimed invention were owned by Boston
Scientific Corporation. See Req. Reh’g 2. Based on the submission of the
Statement of Common Ownership, we agree with Appellant that Moffit is
disqualified as a reference for the purposes of 35 U.S.C. § 103. See 35
U.S.C. § 103(c). Accordingly, the Request is granted, and we withdraw the
rejection of claims 2 and 17 as unpatentable over Moffit.

DECISION
We grant Appellant’s Request.
CONCLUSION SUMMARY
In summary:
Outcome of Decision on Rehearing:

Claims 35 U.S.C
§
Reference(s)/Basis Denied Granted
2, 17 103 Moffit 2, 17
Overall
Outcome
2, 17

Appeal 2019-000270
Application 15/278,113
4

Final Outcome of Appeal after Rehearing:

Claims 35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
2–6, 16–20 102(e) Moffit 2–6, 16–20
2, 17 103(a) Moffit 2, 17
7–15, 21 103(a) Moffit and Gandhi 7–15, 21
2–21 ODP Claims 1, 9, 11,
16–18 of Birkholz
’521 and Gandhi
2–21
2–21 ODP Claims 1, 5, 9–11,
13–18 of Birkholz
’521 and Gandhi
2–21
Overall
Outcome
2–21

GRANTED