Ex Parte ELLINGSON et al

Patent Trials and Appeals Board

May 20, 2019

14886152 - (D) (P.T.A.B. May. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/886,152 10/19/2015
27581 7590 05/22/2019
Medtronic, Inc. (CVG)
8200 Coral Sea Street NE.
MS:MVC22
MINNEAPOLIS, MN 55112
FIRST NAMED INVENTOR
Michael L. ELLINGSON
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.
P0035613.USV3/LG10126.L33 3642
EXAMINER
ALTER MORSCHAUSE, ALYSSA MARGO
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
05/22/2019 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):
rs.patents.five@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL L. ELLINGSON and HYUN J. YOON
Appeal2018-006196
Application 14/886, 152
Technology Center 3700
Before BRETT C. MARTIN, JEREMY M. PLENZLER, and
LISA M. GUIJT, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Decision rejecting claims 1-5 and 11-16. 1 We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 "Claims 6-10 are objected to as being dependent upon a rejected base
claim." Final Act. 7.
Appeal2018-006196
Application 14/886, 152
CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim. Claims 2-5 and 11-16 depend
from claim 1. Claim 1 is reproduced below:
1. A method comprising:
automatically determining, with an implantable medical
device, one or more parameters of an exposure operating mode
based on at least one of stored information related to sensed
physiological events and/or stored information related to
therapy provided over a predetermined period of time; and
switching operation of the implantable medical device
from parameters of a current operating mode to the one or more
automatically determined parameters of the exposure operating
mode.
REJECTIONS
1. Claims 1-3, 5, and 12-16 are rejected under 35 U.S.C. § 102 as
being anticipated by Nelson (US 2006/0167496 Al, published July 27,
2006).
2. Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable
over Nelson.
3. Claim 4 is rejected under 35 U.S.C. § 103 as being unpatentable
over Nelson and Seim (US 2005/0096708 Al, published May 5, 2005).
OPINION
Claim 1
Appellant explains that "the primary point of contention is the
interpretation of 'automatically determining, with an implantable medical
device, one or more parameters of an exposure operating mode.'" Reply Br.
2. The Examiner finds that Nelson discloses that limitation, with Nelson's
parameters being "based on ... stored information related to therapy
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Application 14/886, 152
provided over a predetermined period of time." Final Act. 4 ( citing Nelson
,r,r 21, 23-27); Ans. 7-9. 2 Appellant responds that "[t]he citations ofNelson
relied upon by the rejection only set forth that an exposure mode with
parameters does exist and that the device switches to that exposure mode"
and "[t]here is nothing in Nelson that discloses automatic determination of
the parameters themselves." Appeal Br. 6. Appellant contends that "[t]he
mere fact that Nelson has an exposure operating mode with certain
parameters does not mean that Nelson's implantable medical device
automatically determines what those parameters should be." Id. Appellant's
contentions are not persuasive.
Nelson explains that in its implantable medical device (IMD),
"memory 29 includes data and instructions relating to a mode adjustment
feature of IMD 18 ... to operate in the normal operating mode during
normal device operation and in the MRI exposure mode when exposed to a
disruptive field." Nelson ,r 21. "IMD 18 ... provides for automatic mode
adjustment through field sensors." Id. "When IMD 18 enters the MRI
exposure mode ... [ s Jome of the changes include ... provid[ing] a set of
operational parameters." Id. ,r 26. Appellant does not dispute that Nelson's
set of operational parameters associated with the MRI exposure mode
includes "stored information related to therapy provided over a
predetermined period of time," as recited in claim 1. When Nelson employs
automatic mode adjustment, the set of operational parameters associated
with the MRI exposure mode are automatically determined because they
2 Appellant disputes whether Nelson discloses its parameters being "based
on ... stored information related to sensed physiological events" (Appeal
Br. 8), but that is not the basis for the Examiner's rejection.
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Application 14/886, 152
exist in memory 29 and are accessed automatically without requiring manual
input.
In the Reply Brief, Appellant attempts to read numerous limitations
into the claim from the Specification. Reply Br. 2--4. Those contentions are
not persuasive because they are not commensurate with the scope of the
claim.
For at least these reasons, we are not apprised of error in the
Examiner's decision to reject claim 1. Claims 4, 5, 11, and 16 depend from
claim 1, and Appellant does not provide separate arguments for those claims.
Claim 2
Claim 2 depends from claim 1, and further recites that "determining
the one or more parameters of the exposure operating mode comprises
periodically determining the one or more parameters of the exposure
operating mode based on the stored information." The Examiner finds that
Nelson discloses this feature. Final Act. 5 (citing Nelson ,r 27). Appellant
responds that "[t]he rejection to claim 2 does not attempt to address the
periodic nature of the automatic determination, and ... Nelson fails to
disclose such periodic automatic determination." Appeal Br. 8.
Paragraph 27 of Nelson explains, for example, that "[a] time and date
stamp in memory 29 provides an indication in the stored data that a
disruptive field was encountered and that IMD 18 initiated operation in the
MRI exposure mode at the recorded time." The Examiner explains that this
"disclose[ s] that the parameters were 'periodically' determined (based on the
stamps) as needed when a disruptive field is entered." Ans. 10. Appellant
does not address the disclosure in paragraph 27 of Nelson or the Examiner's
corresponding explanation in any meaningful way.
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Application 14/886, 152
Accordingly, we are not apprised of Examiner error in the rejection of
claim 2.
Claim 3
Claim 3 depends from claim 1, and further recites steps including
"receiving one or more parameters for the exposure operating mode via
telemetry" and "comparing the parameters received via telemetry to the
automatically determined parameters," as well as "overriding the received
parameters that are different than the automatically determined parameters
with the automatically determined parameters." The rejection of claim 3
simply states that "Nelson et al. discloses a communications system
(depicted as 30 in figure 2) with an antenna (page 2, paragraph 22) for
communication with a processor (see figure 2)," and is silent as to any of the
recited steps. Final Act. 5. The Answer further explains that "Nelson
discloses on page 3, paragraphs 32-34, a programmer 20 which facilitates
the receipt of operational settings and information as well as the comparing
and updating of the saved parameters." Ans. 10-11.
In addition to noting the insufficient explanation provided by the Final
Action (Appeal Br. 9; Reply Br. 4), Appellant contends that "[p]resumably,
the Examiner['s Answer] is relying on the interlocks of paragraph [0032],
although the Examiner's Answer has not included any direct quotations from
Nelson, when asserting that there is a comparison as recited in claim 3"
(Reply Br. 4--5). The rejection fails for these reasons alone, as the Examiner
fails to set forth sufficient basis to support a finding that Nelson discloses the
features recited in claim 3. Moreover, we agree with Appellant that "these
interlocks and associated rules are not a comparison of exposure mode
operational parameters received via telemetry to exposure mode operational
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Application 14/886, 152
parameters that have been automatically determined as recited in base claim
1." Reply Br. 4--5.
Accordingly, we do not sustain the Examiner's decision to reject
claim 3.
Claims 12-14
Claims 12-14 each depend from claim 1, and further recite an
"analyzing" step followed by a "selecting" step applying the "analysis." The
Examiner finds that Nelson discloses each of these limitations. Final Act. 6
("As to claims 12-14, Nelson et al. discloses analyzing cardiac pacing data,
amplitude and time and selecting one of amplitude or pulse width, thresholds
or pacing mode ( e.g., pages 2-3 , paragraphs 28-31 )."). The Answer does
not elaborate on these findings. See Ans. 11 ("as previously made of record,
Nelson disclose the modification and comparison of operational parameters
(e.g., see pages 2-3, paragraphs 28-31, for example)").
Claim 12, for example, specifies that "the stored information includes
measured pacing capture thresholds during a predetermined period of time,"
and further recites a step of "analyzing the pacing capture thresholds
measured during the predetermined period of time," as well as a step of
"selecting one of an amplitude and pulse width for pacing pulses to be
delivered during the exposure operating mode based on the analysis."
Appellant points out, for example, that "[t]he rejection and the Examiner's
Answer merely cites to paragraphs 28-31 of Nelson and does not quote any
specific language to prove the Examiner's contention." Reply Br. 5.
Appellant contends that "[t]hese passages do not disclose that there is any
analysis based on pacing capture thresholds measured during a
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predetermined period of time in order to select one of an amplitude and
pulse width for pacing pulses to be delivered during exposure mode." Id.
The Examiner does not provide any explanation, nor do we agree, that
the cited portions of Nelson disclose the features of claim 12. Appellant
provides similar contentions with respect to the claims 13 and 14, which also
are persuasive for the reasons set forth above regarding claim 12.
Accordingly, we do not sustain the Examiner's decision to reject
claims 12-14.
Claim 15
Claim 15 depends from claim 1, and further recites that "after
automatically determining the one or more parameters of the exposure
operating mode, storing the automatically determined parameters of the
exposure operating mode in a memory." The Examiner finds that Nelson
discloses this limitation because "the memory includes stored information
and instructions for operation (page 2, paragraph 21 and 27)." Final Act. 5.
Appellant explains that "[i]n the Examiner's interpretation of
automatically determining ... the accessing of the parameters from storage
in order to execute them during the temporary operation of the exposure
operation mode is [the] automatically determining." Reply Br. 6-7.
Appellant explains that "in that situation, the accessing of the parameters
from storage necessarily comes after the parameters were stored there in the
first place." Id. at 7. We agree. Nelson does not "store the automatically
determined parameters" "after the automatically determining" because those
parameters were already stored before the "automatically determining" step.
Accordingly, we do not sustain the Examiner's decision to reject
claim 15.
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DECISION
We AFFIRM the Examiner's decision to reject claims 1, 2, 4, 5, 11,
and 16.
We REVERSE the Examiner's decision to reject claims 3 and 12-15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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