Ex Parte Bonner et alDownload PDFPatent Trial and Appeal BoardDec 27, 201612503298 (P.T.A.B. Dec. 27, 2016) 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. 12/503,298 07/15/2009 Matthew Bonner P0035044.00/LG10126 7836 12/29/201627581 7590 Medtronic, Inc. (CRDM) 710 MEDTRONIC PARKWAY NE MS: LC340 Legal Patents MINNEAPOLIS, MN 55432-9924 EXAMINER CAVERN, JONATHAN ART UNIT PAPER NUMBER 3737 NOTIFICATION DATE DELIVERY MODE 12/29/2016 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 @ c ardinal-ip .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATTHEW BONNER, KENNETH GARDESKI, BRUCE R. MEHDIZADEH, ROGER CHRISTOPHERSON, and MICHAEL R. NEIDERT Appeal 2015-001571 Application 12/503,298 Technology Center 3700 Before JILL D. HILL, LISA M. GUIJT, and ERIC C. JESCHKE, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’ decision2 rejecting claims 14—17 and 23—25.3 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellants identify the real party of interest as Medtronic, Inc. Br. 2. 2 Appeal is taken from the Final Office Action dated October 22, 2013 (“Final Act.”). 3 Claims 1—13, 18—22, and 26—29 have been withdrawn. Br. 2. Appeal 2015-001571 Application 12/503,298 CLAIMED SUBJECT MATTER Claims 14 and 16 are the independent claims on appeal. Claim 14, reproduced below, is illustrative of the claimed subject matter on appeal. 14. An apparatus for subcutaneous lead guidance comprising: a flexible guide strap having a first end and a second end, the guide strap adapted to be attachable on a patient’s skin to extend along a planned tunneling path between the first end positioned adjacent an incision and the second end positioned adjacent a target site; a shielded flexible circuit and a plurality of induction coils attached to the guide strap to define the planned tunneling path from the incision to the target site; a tunneling tool having a distal portion with a leading end and at least one position sensor on the distal portion; and a feedback device coupled to the tunneling tool and the flexible circuit and configured to generate a first feedback signal as the leading end approaches the target site within the planned tunneling path and a second feedback signal different than the first feedback signal if the leading end veers off the planned tunneling path. REJECTIONS4 I. Claims 14, 16, and 23—25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ben-Haim (US 6,314,310 Bl; iss. Nov. 6, 2001) and Gildenberg (US 6,741,883 B2; iss. May 25, 2004). 4 The Examiner’s rejection of claims 14—17 and 23—25 under 35 U.S.C. §112, first paragraph, is withdrawn. See Ans. 2. 2 Appeal 2015-001571 Application 12/503,298 II. Claims 15 and 17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ben-Haim, Gildenberg, and Bennett (US 2008/0132969 Al; iss. June 5, 2008). ANALYSIS Rejection I Regarding independent claim 1, the Examiner finds, inter alia, that Ben-Haim discloses a surgical navigation system, including a strap that is “placed along the patient’s vertebrae, to aid in guiding a needle into the vertebrae,” and thus, the strap is “placed adjacent to and over the incision and target site.” Final Act. 4—5. Appellants argue that Ben-Haim fails to disclose “a position sensor defining a planned tunneling path from an incision site to a target site.” Br. 7 (emphasis omitted). Appellants submit that, in Ben-Haim, “the needle extends toward a vertebra and not along a planned tunneling path defined by a position sensor and extending between an incision adjacent to the first end of the strap to a target site [(adjacent to the second end of the strap)].” Id. at 8 (citing Figs. 9). Appellants contend that the Examiner improperly relied on hindsight. Id. at 9. The Examiner responds that Appellants are “using a narrow definition of ‘planned tunneling path.’” Ans. 2. The Examiner explains that [t]he strap of Ben-Haim is placed along the examination area on the skin surface over the vertebrae. The guide strap (and its ends) are positioned adjacent to the incision and to the target site. The procedure is performed on the vertebrae. Thus a tunneling path is “defined” in that the examination volume (region through which the needle is guided) is defined by the placement of the strap and associated reference sensors. 3 Appeal 2015-001571 Application 12/503,298 Id. at 3. The Examiner notes that “[t]he claim language does not preclude the path being a straight line.” Id. Independent claim 14 requires, in relevant part, “[a] guide strap adapted to be attachable on a patient’s skin to extend along a planned tunneling path between [a] first end [of the strap] positioned adjacent an incision and [a] second end [of the strap] positioned adjacent a target site.” Br. 13 (Claims App.); see also id. at 14 (claim 16: “attaching a first end of a substrate of flexible guide strap on a patient’s skin adjacent to an incision site and a second end of the substrate over a target site.). Although Ben- Haim discloses that “the reference element is placed in contact with the patient’s skin adjacent to the area of the body into which the tool is to be inserted” (Ben-Haim, 4:67—5:2), a preponderance of the evidence fails to support the Examiner’s finding that Ben-Haim discloses that the strap is adapted to be attachable such that a first end of the strap is positioned adjacent an incision and the second end of the strap is positioned adjacent a target site, as required by the claims. Further, as argued by Appellants, Ben- Haim discloses a planned tunneling path for the needle that extends perpendicularly from patient’s skin, into the body toward the vertebra (see, e.g., Fig. 9), such that although positioning the first end of the strap adjacent to the incision seems possible, positioning the second end of the strap adjacent to the target site (at the vertebra) does not seem possible and, in any event, is not disclosed. Accordingly, we do not sustain the Examiner’s rejection of independent claims 14 and 16, and claims 23—25 depending therefrom. 4 Appeal 2015-001571 Application 12/503,298 Rejection II The Examiner’s reliance on Bennett does not cure the deficiency in the Examiner’s finding with respect to Ben-Haim as discussed supra. Therefore, we also do not sustain the Examiner’s rejection of claims 15 and 17. DECISION The Examiner’s decisions to reject claims 14—17 and 23—25 under 35 U.S.C. § 103(a) are reversed. REVERSED 5 Copy with citationCopy as parenthetical citation