Ex Parte Bonner et al

Patent Trial and Appeal Board

Jun 23, 2016

12915859 (P.T.A.B. Jun. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/915,859 10/29/2010
27581 7590 06/27/2016
Medtronic, Inc. (CRDM)
710 MEDTRONIC PARKWAY NE
MS: LC340 Legal Patents
MINNEAPOLIS, MN 55432-9924
FIRST NAMED INVENTOR
Matthew D. Bonner
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P0038560.0l/LG10126 8443
EXAMINER
TON, MARTIN TRUYEN
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
06/27/2016 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):
medtronic_crdm_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW D. BONNER and
RAYMOND W. USHER
Appeal2014-005298
Application 12/915,859
Technology Center 3700
Before LYNNE H. BROWNE, ANNETTE R. REIMERS, and
THOMAS F. SMEGAL, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Matthew D. Bonner and Raymond W. Usher (Appellants) appeal
under 35 U.S.C. § 134 from the rejection of claims 1-16. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal2014-005298
Application 12/915,859
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A medical device system, comprising:
a catheter having a lumen and a distal portion configured for
insertion in proximity of tissue of a patient; and
an implantable medical device having a housing and a
fixation member operatively coupled to said housing having an
unengaged state when in said lumen of said catheter and an
engaged state configured to engage tissue of a patient with a
fixation force between said implantable medical device and said
tissue of said patient when outside of said lumen of said catheter,
said medical device being magnetically attractable; and
a magnetic element being configured to magnetically engage
said implantable medical device and to pass through said lumen
of said catheter, said magnetic attraction between said magnetic
element and said implantable medical device being less than said
fixation force engaging said tissue of said patient.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Shipko
Kveen
Opolski
Ostroff
Ducharme
us 5,697,936
US 7 ,840,281 B2
US 2004/0176797 Al
US 2009/0082828 Al
US 2009/0093822 Al
REJECTIONS
Dec. 16, 1997
Nov. 23, 2010
Sept. 9, 2004
Mar. 26, 2009
Apr. 9, 2009
I. Claims 1and6-16 stand rejected under 35 U.S.C. § 101 based
on provisional double patenting in view of US Patent
Application No. 12/915,745.
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Appeal2014-005298
Application 12/915,859
II. Claims 1, 2, 4--8 and 14--16 stand rejected under 35 U.S.C.
103(a) as unpatentable over Ostroff, Opolski, and Kveen. 1
III. Claim 3 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Ostroff, Opolski, Kveen, and Ducharme.
IV. Claims 9-13 stand rejected under 35 U.S.C. 103(a) as
unpatentable over Ostroff, Opolski, Kveen, and Shipko.
DISCUSSION
Rejection I
The Examiner provisionally rejects claims 1 and 6-16 on the ground
of non-statutory obviousness-type double patenting as being unpatentable
over claims 1 and 5-15 of copending US Patent Application No. 12/915,745.
Final Act. 6.
Claim 1 and claims 5-15 (based on their dependency from claim 1) of
copending Application No. 12/915,745 were amended on July 25, 2013,
after the Examiner's rejection that is the subject of this appeal (see Final
Action dated May 9, 2013). For that reason, we decline to reach this
rejection. See Ex parte Monda, 95 USPQ2d 1884, 1885 (BPAI 2010)
(Precedential) (Panels have the flexibility to not reach provisional
obviousness-type double-patenting rejections.).
Rejection II
The Examiner finds that the combined teachings of Ostroff, Opolski,
and Kveen disclose or suggest all of the limitations of independent claim 1.
1 The statement of this rejection includes claim 3; however, claim 3 is not
addressed in the explanation of the rejection and is separately rejected under
a different ground of rejection. Accordingly, we understand the inclusion of
claim 3 in the statement of this rejection to be a typographical error.
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Appeal2014-005298
Application 12/915,859
In particular, the Examiner finds that Kveen "teaches an electrode delivery
system wherein the system includes a magnetic coupling device to
releasably retain an electrode assembly (Column 20, Lines 19-25) and is
disconnected once the anchor has been fixed to patient tissue by exerting an
insertion force to the electrode assembly to disengage magnetic attraction"
Final Act. 8 (citing Kveen 20:46-52). The Examiner reasons that "a pull
force as opposed to a 'pushing' insertion force is an obvious alternative as
evidenced by Frassica et al. (US 2007 /0005041 ), along with magnetization
and demagnetization ([i-f 0306])." Id.
Noting that Kveen "only requires that disengagement occur when the
operator pushes or keeps pushing," Appellants contend that:
This action does not require that the magnetic attraction be less
than the fixation force (the force holding the medical device to
the patient's tissue) because, for example, the medical device
may simply abut the patient's tissue and the medical device could
be prevented from moving farther simply by proximity to the
patient's tissue.
Appeal Br. 7. Appellants further note that "Kveen et al '281 is completely
silent [with respect to] relative magnetic attraction and fixation and the
operation of Kveen et al '281 does not require such limitation." Id. Based
on this observation, Appellants argue that "since Kveen et al '281 utilizes a
disengagement mechanism (pushing) which doesn't require the relative
magnetic attraction I fixation force required by claim 1, Kveen et al '281
cannot be said to render such explicit structure obvious." Id.
In addition, Appellants argue that although Frassica describes "a
laundry list of just about every attachment I detachment mechanism,"
Frassica "does not teach the explicitly claimed requirement that the magnetic
element be configured to magnetically engage the medical device with a
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Appeal2014-005298
Application 12/915,859
magnetic force less than the fixation force engaging the patient's tissue." Id.
at 8.
Responding to these arguments, the Examiner finds that "[ t ]he prior
art has identified the options of pushing or pulling the device or elements of
the delivery device as discussed in the Kveen reference (Column 20, Lines
46-52) and in Frassica reference ([i-f 0306])." Ans. 3. Based on this finding,
the Examiner determines that "[g]iven these finite number of options, there
would be a reasonable expectation that pulling the delivery device back
would have a reasonable expectation of success." Id. Thus, we understand
the Examiner to rely on an "obvious to try" rationale in support of the
proposed combination.
The Manuel of Patent Examining Procedure (MPEP) instructs
Examiners that in support of an "obvious to try" rationale, the Examiner
must find that at the time of the invention there had been a recognized
problem or need in the art and that at that time there were a finite number of
identified, predictable potential solutions to the recognized need or problem.
See MPEP § 2143(E). The Examiner purports to make the latter finding;
however, the evidence of record does not support such a finding.
Rather, as discussed supra, Appellants correctly note that neither
Kveen nor Frassica disclose "a magnetic element being configured to
magnetically engage said implantable medical device and to pass through
said lumen of said catheter, said magnetic attraction between said magnetic
element and said implantable medical device being less than said fixation
force engaging said tissue of said patient" (i.e., an implantable medical
device that is released by pulling), as required by claim 1. Moreover,
Frassica discloses a minimum of 22 different ways to release a medical
implant, and implies that more ways are contemplated. See Frassica i1306.
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Application 12/915,859
Accordingly, it appears that there were not a finite number of identified,
predictable solutions at the time of the invention. Thus, the Examiner's
"obvious to try" reasoning lacks rational underpinning.2
For these reasons, we do not sustain the Examiner's decision rejecting
independent claim 1, and claims 2, 4-8, and 14-16, which depend
therefrom.
Rejections III and IV
The rejections of claim 3 as unpatentable over Ostroff, Opolski,
Kveen, and Ducharme and claims 9-13 as unpatentable over Ostroff,
Opolski, Kveen, and Shipko, rely on the same faulty reasoning as the
rejection of independent claim 1 discussed supra. Accordingly, we do not
sustain the Examiner's decisions rejecting these claims for the same reasons.
DECISION
The Examiner's rejections of claims 1-16 are REVERSED.
REVERSED
2 We further note that a proper determination that it would be obvious to try
a combination requires a finding that there is a design need or market
pressure to solve a problem in addition to a finding that there are a finite
number of identified, predictable solutions. See KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 421 (2007). The Examiner fails to make this finding.
See Ans. 3.
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