Ex Parte CHO et al

Patent Trial and Appeal Board

Feb 5, 2016

13026913 (P.T.A.B. Feb. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/026,913 02/14/2011
27581 7590 02/09/2016
Medtronic, Inc. (CRDM)
710 MEDTRONIC PARKWAY NE
MS: LC340 Legal Patents
MINNEAPOLIS, MN 55432-9924
FIRST NAMED INVENTOR
YONGK. CHO
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.
P0022783.0l 5776
EXAMINER
HANKINS, LINDSEY G
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
02/09/2016 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 YONG K. CHO, TERESA A. WHITMAN, MARK L. BROWN,
SCOTT W. DA VIE, KAREN J. KLECKNER, and CHARLES R. GORDON
Appeal2013-010989
Application 13/026,913 1
Technology Center 3700
Before STEFAN STAICOVICI, BRANDON J. WARNER, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Yong K. Cho et al. (Appellants) appeal under 35 U.S.C. § 134(a) from
the Examiner's final decision rejecting under 35 U.S.C. § 102(b) claims 1--4,
6, and 7 as anticipated by Nichols (US 5,374,282, iss. Dec. 20, 1994) and
under 35 U.S.C. § 103(a) claim 5 as unpatentable over Nichols and Struble
(US 2007/0255151 Al, pub. Nov. 1, 2007). Claims 8-20 have been
According to Appellants, the real party in interest is Medtronic, Inc.
Br. 2 (filed Jan. 29, 2013).
Appeal2013-010989
Application 13/026,913
canceled. Br. 2. We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b).
SUMMARY OF DECISION
We AFFIRM.
INVENTION
Appellants' invention relates to a method for "monitoring cardiac
activity." Spec. 4, 11. 6-8.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A method of confirming that an implantable medical
device (IMD) is not oversensing electrical activity in an EGM,
compnsmg:
sensing an EGM via an implantable medical device;
detecting electrical events using the EGM;
sensing an intracardiac pressure via the IMD;
determining a dP/dt of the sensed intracardiac pressure;
detecting the presence of a mechanical event using the
dP/dt, a mechanical event being deemed present when the dP/dt
exceeds a threshold, the electrical events and mechanical events
being detected independently from each other; and
comparing the electrical events to the mechanical events
to identify which electrical events are followed by and
associated with mechanical events, the identification of
associated electrical and mechanical events indicating that such
electrical events have not been oversensed.
ANALYSIS
The anticipation rejection of claims 1-4, 6, and 7
Appellants have not presented arguments for the patentability of
claims 2--4, 6, and 7 apart from claim 1. Therefore, in accordance with 37
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Application 13/026,913
C.F.R. § 41.37(c)(l)(iv) (2015), we select claim 1 as the representative claim
to decide the appeal of the rejection of these claims, with claims 2--4, 6, and
7 standing or falling with claim 1.
Appellants argue that "Nichols does not determine which of the
electrical events are associated with mechanical events" because Nichols's
device "can only determine how many of each occurred." Br. 5. Thus,
according to Appellants, Nichols "cannot determine which electrical events
have not been oversensed, as required by the claims." Id.
We do not agree with Appellants' position because, as the Examiner
correctly states, "claim 1 does not require a 1 : 1 comparison between
electrical and mechanical beats, nor identifying which exact beats in a set of
electrical events are oversensed." Ans. 5---6. It is well established that
limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671F.2d1344, 1348 (CCPA 1982). Here,
independent claim 1 requires "comparing the electrical events to the
mechanical events to identify which electrical events are followed by and
associated with mechanical events." Br. 9. Thus, because claim 1 uses the
plural term "events," the Examiner is correct in that the phrase "electrical
events" includes "a set of beats." Ans. 6. Moreover, we agree with the
Examiner that the generic term "events" includes "a 'value', a 'count' or a
'number."' Adv. Act 2 (mailed Oct. 1. 2012). We therefore agree with the
Examiner that, "[i]f there is a set where it is confirmed that the electrical
events are followed by and associated with mechanical events ... the system
has compared the electrical events to mechanical events and identified that
all of the electrical events were followed by and associated with mechanical
events." Id.
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Appeal2013-010989
Application 13/026,913
In this case, Nichols' s method includes determining and counting the
number of electrical events and related pressure events that occur in a timing
period, comparing the numbers of electrical events and related pressure
events, and adjusting a sensitivity threshold based on the comparison to
avoid both oversensing and undersensing electrical activity of an
implantable medical device. 2 See Nichols, Abstract; see also col. 4, 11. 32-
37; col. 8, 1. 33---col. 10, 1. 21; and Fig. 3. In other words, because Nichols's
method compares the numbers of electrical events and related pressure
events, Nichols discloses "comparing the electrical events to the mechanical
events to identify which electrical events are followed by and associated
with mechanical events," as called for by independent claim 1. Furthermore,
because oversensing is determined based on the numbers of electrical events
and related pressure events, Nichols discloses the limitation of
"identification of associated electrical and mechanical events indicating that
such electrical events have not been oversensed."
Appellants also argue that Nichols fails to disclose that the electric
events and the pressure (mechanical) events are "detected independently
from each other," as called for by claim 1. Br. 6. According to Appellants,
although Nichols' s detection of an electrical event is a condition precedent
to detecting a mechanical event, claim 1 requires that that "detection of
mechanical events is ongoing." Id. at 7.
2 Similar to Appellants' Specification, Nichols's pressure (mechanical)
event is related to an electric event and is counted only if a pressure or a rate
of change of pressure measurement exceeds a predetermined threshold.
Compare Spec. 10, 11. 19-23, with Nichols, col. 8, 11. 54---65 and col. 15, 11.
8-12.
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We are not persuaded by Appellants' arguments because, as the
Examiner correctly finds, "the information is collected separately and
independently because electrical activity and pressure signal[ s] sense
different features of a heart contracting using separate sensors." Ans. 7.
Furthermore, we note that Nichols specifically discloses that "electrical
cardiac signal and pressure signal are periodically or continuously
monitored." Nichols, col. 4, 11. 33-35 (emphasis added). Nichols further
specifies that "pressure sensor 22' ... is continuously activated." Id., col.
14, 1. 51 (emphasis added). As such, because Nichols's method
continuously monitors electrical and pressure activity, Nichols discloses that
the electric events and the pressure (mechanical) events are "detected
independently from each other," as called for by claim 1.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 102(b) ofclaim 1, and claims 2--4, 6, and 7 falling with
claim 1, as anticipated by Nichols.
The obviousness rejection of claim 5
Appellants' arguments claim 5 rely on the arguments presented supra
in the rejection of independent claim 1 as anticipated by Nichols. Br. 7.
Accordingly, for the same reasons discussed above, we sustain the rejection
of claim 5 over the combined teachings of Nichols and Struble.
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Appeal2013-010989
Application 13/026,913
SUMMARY
The Examiner's decision to reject claims 1-7 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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