Ex Parte Chow

Patent Trial and Appeal Board

Jun 23, 2016

12551201 (P.T.A.B. Jun. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/551,201 08/31/2009
99661 7590 06/27/2016
SHUMAKER & SIEFFERT, P.A.
1625 RADIO DRIVE
SUITE 100
WOODBURY, MN 55125
FIRST NAMED INVENTOR
Theodore Chow
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.
P0031285.00/ll ll-138US01 2269
EXAMINER
BAYS,PAMELAM
ART UNIT PAPER NUMBER
3766
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):
pairdocketing@ssiplaw.com
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 THEODORE CHOW
Appeal2014-005223
Application 12/551,201
Technology Center 3700
Before MICHAEL L. HOELTER, JILL D. HILL, and ERIC C. JESCHKE,
Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Theodore Chow (Appellant) 1 seeks review, under 35 U.S.C. § 134(a),
of the Examiner's decision to reject claims 1-37. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies Medtronic, Inc. as the real party in interest.
Appeal Br. 3.
Appeal2014-005223
Application 12/551,201
The disclosed subject matter "relates to implantable medical devices,
and, more particularly, to devices for monitoring and/or treatment of
cardiovascular conditions." Spec. i-f 1. Claims 1, 12, 23, and 34 are
independent. Claim 1 is reproduced below:
1. A method comprising:
measuring an impedance of an electrical path
that includes a portion of a heart wall a plurality of
times during at least one portion of a cardiac cycle,
the electrical path comprising a first electrode
engaged to or within a wall of a chamber of a heart
and a second electrode, wherein the second
electrode is an extra-cardiac electrode that is
disconnected from the heart; and
calculating a value indicative of heart wall
motion during the portion of the cardiac cycle based
on the impedance measurements.
REJECTIONS2
1. Claims 1-10, 12-21, 23-32, and 34--37 are rejected under
35 U.S.C. § 103(a) as unpatentable over Belalcazar (US 2008/0097539 Al,
published Apr. 24, 2008) and Min (US 2005/0216067 Al, published Sept.
29, 2005).
2. Claims 11, 22, and 33 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Belalcazar, Min, and Paul (US 2004/0267142 Al,
published Dec. 30, 2004).
2 The Examiner rejected claim 3 4 under 3 5 U.S. C. § 1 01 as directed to
patent-ineligible subject matter. See Final Act. 2 (dated Apr. 25, 2013). In
the Answer, the Examiner withdraws this rejection. See Ans. 5.
2
Appeal2014-005223
Application 12/551,201
DISCUSSION
Rejection I -The rejection of claims 1-10, 12-21, 23-32,
and 34-37 under 35 USC§ 103(a)
A. Claims 1-10
In rejecting claim 1, the Examiner relied on Belalcazar to satisfy
various limitations but stated that "Belalcazar does not disclose wherein the
second electrode is an extra-cardiac electrode that is disconnected from the
heart." Final Act. 3. The Examiner found, however, that Min
discloses a system and method of determining impedance to
assess cardiac wall motion (Paragraph 0003, 0014), wherein one
electrode is an extra-cardiac electrode that is disconnected from
the heart (SVC electrode or can electrode, Paragraph 0016,
0100), comprising a housing electrode of an implantable medical
device or a superior vena cava coil electrode (SVC electrode or
can electrode, Paragraph 0016, 0100, 0106).
Id. at 3--4. The Examiner concluded that it would have been obvious
to include an electrode such as an extra-cardiac electrode that is
disconnected from the heart, wherein the electrode comprises
one of a housing electrode of an implantable medical device or a
superior vena cava coil electrode as taught by [Min], in the
system and method disclosed by Belalcazar, in order to detect
impedance over a larger or more specific area of the heart, as also
taught by [Min] (Paragraph 0016, 0100, 0106).
Id. at 4.
Appellant argues that "one of ordinary skill in the art would not have
modified the teachings of Belalcazar directed to measurement of cardiac
wall motion to use an extra-cardiac electrode based on the teachings of Min"
because neither Min nor Belalcazar "suggests that there would be any
benefit from or reason for measuring impedance to assess cardiac wall
motion when there is an extra-cardiac electrode that is disconnected from the
heart." Appeal Br. 11. Although we agree with the Examiner (Ans. 8) that
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Appeal2014-005223
Application 12/551,201
the lack of an explicit teaching or suggestion to combine the relied-upon
disclosures does not necessarily undermine the Rejection, we agree with
Appellant that the Examiner has not provided adequate articulated reasoning
with rational underpinning to support the conclusion that it would have been
obvious to modify Belalcazar to include an extra-cardiac electrode
disconnected from the heart to perform the step of "calculating a value
indicative of heart wall motion during the portion of the cardiac cycle," as
recited in claim 1. See In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006), cited
with approval in KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Belalcazar teaches, as stated by Appellant, "that cardiac wall motion
may be assessed by two electrodes," but "only teaches that cardiac wall
motion may be assessed by two electrodes attached to the heart." Appeal Br.
11; see also Belalcazar i-f 5 ("A CRM system detects tachyarrhythmia using
cardiac local impedance indicative of cardiac local wall motion. A cardiac
local impedance signal indicative of an impedance of a cardiac region is
sensed by using a pair of bipolar electrodes placed in that cardiac region.").
Belalcazar also teaches, as stated by the Examiner, the use of extra-cardiac
electrodes "for pacing and sensing purposes, but does not explicitly state that
these electrodes are used to determine impedance values." Ans. 9 (citing
Belalcazar i-f 29). Min teaches, as stated by Appellant, "how to measure an
impedance via the RV-can in order to determine whether there has been an
increase in thoracic fluids," but does not teach using RV-can impedance to
assess cardiac wall motion. Appeal Br. 11 (discussing Min i-f 16). 3
3 Appellant seems to acknowledge that the "RV-can" configuration in
Min involves a "first electrode engaged to or within a wall of a chamber of a
4
Appeal2014-005223
Application 12/551,201
Here, the Examiner has not set forth sufficient reasoning as to why a
person of ordinary skill in the art, aware of the teachings above, would have
added the "extra-cardiac electrode" of Min to the device of Belalcazar and
then used the "first electrode" of Belalcazar with the "extra-cardiac
electrode" of Min to provide the step of "calculating a value indicative of
heart wall motion during the portion of the cardiac cycle," as recited. The
reasoning provided by the Examiner-"to detect impedance over a larger or
more specific area of the heart" (Final Act. 4) (citing Min i-fi-f 16, 100, 106}-
does not support the conclusion of obviousness because the Examiner has
not shown how that reasoning links the use of an "extra-cardiac electrode" to
the recited step of "calculating a value indicative of heart wall motion during
the portion of the cardiac cycle based on the impedance measurements."
Further, even assuming that the relied-upon paragraphs from Min
(i-fi-f 16, 100, and 106) do describe "several suitable areas for electrode
placement for determining impedance values, depending on the area of the
thoracic region of interest" (Ans. 9), the Examiner has not shown how these
teachings provide the linkage discussed above. See Reply Br. 5 (arguing
that paragraph 16 "teaches that, to the extent an extra-cardiac electrode is
used, the extra-cardiac electrode is used to detect fluid overload" and that "to
the extent a person of ordinary skill in the art would have been motivated to
modify the system of Belalcazar to include an extra-cardiac electrode based
on the teachings of [Min]," it would have been to "additionally detect fluid
heart" (specifically, the right ventricle) and "a second ... extra-cardiac
electrode that is disconnected from the heart" (specifically, on the housing).
See Appeal Br. 11; see also Min i-f 16 (discussing "impedance between an
RV electrode and the housing of 'can' of the device (i.e. RV-can
impedance)").
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Appeal2014-005223
Application 12/551,201
overload with the extra-cardiac electrode, rather than to replace one of the
cardiac electrodes used by the Belalcazar system for assessing cardiac wall
motion with an extra-cardiac electrode").
The Examiner takes the position that Min teaches "assessing cardiac
wall motion"4 because Min "discloses determining ventricular dilation/mass
(Paragraph 0015) and cardiac wall thickness (Paragraph 0016) ... using
impedance measurements (Abstract, Paragraph 0014)." Ans. 6. According
to the Examiner, the position that "the assessment of ventricular
dilation/mass and cardiac wall thickness reads on the limitation[] 'assessing
cardiac wall motion'" is supported by paragraph 27 of Belalcazar, which
provides: "As discussed in this document, the cardiac local impedance is
indicative of cardiac local wall motion, which includes thickening of the
cardiac wall due to systolic contraction." Ans. 7.
We agree with Appellant (Reply Br. 4), however, that to the extent
Min teaches "assessing cardiac wall motion" (e.g., by using impedance
measurements to assess ventricular mass overload or thickening of heart
tissue), Min teaches doing so only using two electrodes engaged to or within
a chamber of the heart and does not teach using "an extra-cardiac electrode,"
as required by claim 1. See Min i-f 16 (discussing how "a V mass overload is
identified if there is a significant increase in impedance between a right
ventricular (RV) electrode and a left ventricular (L V) electrode (i.e. RV-L V
impedance)" and how "any significant increase in RV-L V impedance is
most likely indicative of a thickening of the myocardial tissue between left
and right ventricles").
4 Claim 1 does not recite "assessing cardiac wall motion." We
consider this phrase to refer to the "calculating" step discussed above.
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Application 12/551,201
For these reasons, we do not sustain the rejection of claim 1, or the
rejection of claims 2-10, which depend from claim 1.
B. Claims 12-21, 23-32, and 34--37
To reject the three independent claims in this group--daims 12, 23,
and 34---the Examiner relied on the same reason to combine the teachings of
Belalcazar and Min discussed above regarding claim 1. See Final Act. 3--4.
Thus, for the reasons above, we also do not sustain the rejection of claims
12, 23, or 34 (or their dependent claims 13-21, 24--32, and 35-37).
Rejection 2 - The rejection of claims 11, 22,
and 33 under 35 USC§ 103(a)
Claim 11 depends from claim 1, claim 22 depends from claim 12, and
claim 33 depends from claim 23. Appeal Br. 27, 29, 31 (Claims App.). The
Examiner's reliance on Paul does not remedy the deficiencies in the
combined teachings of Belalcazar and Min, discussed above (see supra
Reiection 1. S A). Thus. for the reasons above. we also do not sustain the
.J / v / / /
rejection of claims 11, 22, and 33.
DECISION
We REVERSE the decision to reject claims 1-37.
REVERSED
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