Ex Parte Giftakis et al

Patent Trial and Appeal Board

Dec 12, 2018

12425922 (P.T.A.B. Dec. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/425,922 04/17/2009
71996 7590 12/14/2018
SHUMAKER & SIEFFERT, P.A
1625 RADIO DRIVE, SUITE 100
WOODBURY, MN 55125
FIRST NAMED INVENTOR
Jonathon E. Giftakis
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.
1023-774US01 3706
EXAMINER
WEHRHEIM, LINDSEY GAIL
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
12/14/2018 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
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 JONATHON E. GIFTAKIS, MARKT. RISE,
PAUL H. STYPULKOWSKI, and TIMOTHY J. DENISON
Appeal2017-002299
Application 12/425,922 1
Technology Center 3700
Before LYNNE H. BROWNE, ERIC C. JESCHKE, and
JASON W. MELVIN, Administrative Patent Judges.
MEL VIN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal arises under 35 U.S.C. § 134(a), from a final rejection of
claims 1, 3-5, 10-15, 22, 26-30, 33, 34, 38, and 39.2 We have jurisdiction
under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify Medtronic plc and Medtronic, Inc. as the real parties in
interest. Appeal Br. 3.
2 In the Answer, the Examiner withdraws the rejections of claims 2, 6-9, 16-
21, 23-25, 31, 32, 35-37, 40, and 41. Ans. 3.
Appeal2017-002299
Application 12/425,922
BACKGROUND
The claims are directed to configuration of therapy parameters for
medical devices. See Spec. ,r 2. Claim 1, reproduced below, is illustrative:
1. A method comprising:
monitoring a signal indicative of a physiological parameter
of a patient during and after a first period during which
therapy according to a first therapy program is delivered
to the patient;
determining, with a processor, a characteristic of a washout
period based on the signal monitored after the first
period, wherein the washout period follows the first
period, and wherein a carryover effect from the delivery
of the therapy according to the first therapy program
substantially dissipates during the washout period;
determining, with the processor and based on the
characteristic of the washout period, a time at which to
deliver therapy to the patient according to a second
therapy program; and
automatically initiating the delivery of therapy to the patient
according to the second therapy program at the time
determined based on the characteristic of the washout
period.
Appeal Br. 34 (Claims App.).
REJECTIONS
Appellants seek review of the following rejections:
1. Claims 1, 3-5, 10-15, 22, 26-30, 34, 38, and 39 stand rejected
under 35 U.S.C. § I03(a) as unpatentable over Gliner
(US 2003/0074032 Al, published Apr. 17, 2003) and Pless
(US 2002/0072770 Al, published Jun. 13, 2002). Final Act. 2-18.
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Appeal2017-002299
Application 12/425,922
2. Claim 33 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Gliner, Pless, and Frei (US 2004/0133248 Al, published
July 8, 2004). Final Act. 3--4.
DISCUSSION
The Examiner finds that Gliner substantially teaches the limitations of
claim 1 but "does not explicitly disclose that a characteristic is monitored
after the first period, which later is a deciding factor a time to deliver therapy
to the patient according to a second therapy program." Final Act. 3. In the
Answer, the Examiner finds that Gliner "monitors some characteristic of the
washout period (particularly in block 520 of figure 5), such as whether or
not seizure activity is abated." Ans. 5. The Examiner further states that "[i]t
is during this same period that the system determines if a sufficient washout
period has elapsed (element 534, further discussed in par [0047] of Gliner
'032)." Id. As summarized: the "Examiner considers the second program to
be the result of element 532 of figure 5 in Gliner '032" and "[t]he 'time' at
which this occurs is based on the decision at element 520." Id. at 6.
The Examiner finds that Pless teaches "monitoring of patient signals
after stimulation is delivered during a quiescent period" and, based on that
monitoring, ending the quiescent period and delivering further therapy.
Final Act. 3--4. The Examiner reasons that "whenever the responsive
therapy is initiated, that is 'a time at which to delivery therapy' as recited in
instant claim 1." Ans. 7-8. Thus, as to the combination of Gliner and Pless,
the Examiner concludes that "when the system/method comes to the
decision to provide the second therapy program, that is 'a time' at which to
deliver therapy as recited in instant claim 1." Ans. 8.
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Appeal2017-002299
Application 12/425,922
Appellants argue that Gliner teaches a preset interval between therapy
programs and therefore does not teach determining a time at which to deliver
a second therapy program. Appeal Br. 9--10; Ans. 6. We agree. Gliner
discloses a system that monitors seizure activity to determine whether to
apply additional therapy. Gliner ,r,r 47--48, Fig. 5. If the system determines
to apply additional therapy, it does so after a "minimum time interval has
elapsed" but does not disclose adjusting that minimum time interval based
on monitoring the washout period. Id. ,r 47. As Appellants argue, whether
to apply therapy is not the same as at what time to apply therapy. See Reply
4--5.
Appellants argue also that Pless does not teach determining a time at
which to deliver a second therapy program. Appeal Br. 13. As Appellants
point out, Pless discloses that "the various electrical stimulation signals are
paused or stopped for a discrete period." Pless ,r 67; see Appeal Br. 13.
Based on measurements during that period, Pless' s system determines
whether or not to administer responsive stimulation. Pless ,r 69. Nothing
about Pless' s disclosure indicates that the time at which therapy is
administered occurs at a time other than the preset periods.
For the reasons stated, we do not sustain the rejection of claim 1, or of
claims 3-5, 10-15, or 22, which depend (directly or indirectly) from claim 1.
Additionally, because claim 26 recites a processor configured to "determine,
based on the characteristic of the washout period, a time at which to deliver
therapy to the patient according to a second therapy program," we also do
not sustain the rejection of claim 26 or claims 27-30, 33, 38, or 39, which
depend ( directly or indirectly) from claim 26. Similarly, because claim 34
recites "means for determining, based on the characteristic of the washout
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Appeal2017-002299
Application 12/425,922
period, a time at which to deliver therapy to the patient according to a
second therapy program," we do not sustain the rejection of claim 34.
DECISION
For the above reasons, the Examiner's rejections of claims 1, 3-5, 10-
15, 22, 26-30, 33, 34, 38, and 39 is reversed.
REVERSED
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