Ex Parte Goetz

Patent Trial and Appeal Board

Dec 12, 2016

12738056 (P.T.A.B. Dec. 12, 2016)

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.
12/738,056 04/14/2010 Steven M. Goetz P0029952.02 / LG10137 8869
71996 7590 12/14/2016
SHUMAKER & SIEFFERT , P.A
1625 RADIO DRIVE , SUITE 100
WOODBURY, MN 55125
EXAMINER
LEVICKY, WILLIAM J
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
12/14/2016 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_neuro_docketing @ cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN M. GOETZ
Appeal 2015-0029301’2
Application 12/738,056
Technology Center 3700
Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1—3, 6—11, 14—17, 19-21, and 25—30. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellant’s Specification (“Spec.,” filed Apr. 14,
2010), Appeal Brief (“Appeal Br.,” filed Sept. 5, 2014), and Reply Brief
(“Reply Brief,” filed Jan. 20, 2015), as well as the Final Office Action
(“Final Action,” mailed Apr. 18, 2014) and the Examiner’s Answer
(“Answer,” mailed Nov. 20, 2014).
2 Appellant indicates that Medtronic, Inc. is the real party in interest.
Appeal Br. 3.
Appeal 2015-002930
Application 12/738,056
According to Appellant, the invention relates to “integrity diagnostics
for medical devices.” Spec. 1,11. 4—5. Claims 1,9, 17, 21, and 25 are the
only independent claims. See Appeal Br., Claims App. We reproduce
claim 1, below, as representative of the appealed claims.
1. A method comprising:
receiving a request to perform an integrity measurement at
an implantable medical device from a remote networking device
via a network, wherein the implantable medical device comprises
at least one of a pump or a stimulator;
performing the integrity measurement at the implantable
medical device of at least one component within or coupled to
the implantable medical device in response to the request;
sending a result of the integrity measurement from the
implantable medical device to the remote networking device via
the network; and
receiving a command at the implantable medical device
from the remote networking device via the network in response
to the result of the integrity measurement, the command locking
out the at least one component from being selected for delivery
of therapy.
Id.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
claims 1—3, 6, 8—11, 14, 16, 17, 19, 21, and 25—29 under 35 U.S.C.
§ 103(a) as unpatentable over Armstrong (US 7,567,840 B2, iss. July 28,
2009) and Rueter (US 2004/0030358 Al, pub. Feb. 12, 2004);
claims 7, 15, and 20 under 35 U.S.C. § 103(a) as unpatentable over
Armstrong, Rueter, and either Ayre (US 7,988,728 B2, iss. Aug. 2, 2011) or
Peterson (US 2002/0183693 Al, pub. Dec. 5, 2002); and
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Appeal 2015-002930
Application 12/738,056
claim 30 under 35 U.S.C. § 103(a) as unpatentable over Armstrong,
Rueter, and Lee (US 6,442,432 B2, iss. Aug. 27, 2002).
See Final Action 2—9; see also Answer 2.
ANALYSIS
Based on our review of the record, for the reasons discussed in detail
below, we do not sustain the Examiner’s obviousness rejections of the
claims.
Independent claim 1 recites “receiving a command at the implantable
medical device from the remote networking device via the network in
response to the result of the integrity measurement, the command locking
out the at least one component from being selected for delivery of therapy.'"
Appeal Br., Claims App. (emphases added). The Examiner finds that
Armstrong generally discloses receiving commands at an implantable
medical device from a remote networking device via a network. See, e.g.,
Answer 2. The Examiner further finds that Rueter discloses issuing a
command in response to the result of an integrity measurement, the
command locking out a component of the implantable medical device from
being selected for delivery of therapy. See, e.g., id. at 3. The Examiner
concludes that it would have been obvious to combine the references to
provide the above claim limitation, “since such a modification would
provide the predictable results of reducing the risk of harm to the patient.”
See Final Action 5.
Based on our review of the record, however, we find that the
Examiner’s reason for combining the references, to provide the particular
limitations of claim 1, lacks the required rational underpinning. See KSR
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Appeal 2015-002930
Application 12/738,056
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). As stated above, the
Examiner relies on Rueter to disclose issuing a command, in response to a
result of an integrity measurement, which locks out a component of an
implantable medical device from being selected for delivery of therapy. See,
e.g., Answer 4—5. More specifically, the Examiner references Rueter’s
Figure 10 and paragraph 11. See id. at 4. However, neither the cited figure
nor paragraph teaches that a device remote from the medical device (such as
programmer 20) issues a command in response to a result of an integrity
measurement. See, e.g., Reply Br. 4—5. Instead, Rueter states that
“pacemakers include a circuit that periodically performs a lead check” (i.e.,
the medical device itself), and subsequently describes that based on a result
of the lead check, operation of the pacemaker may be altered, without
reference to a command from any remote device. Rueter 1112.
Thus, in accordance with the teachings of the references as
characterized by the Examiner, Armstrong does not describe anything about
a device remote to a medical device issuing a command in response to an
integrity check which locks out a component of the medical device, and
Rueter at most describes the medical device itself issuing such a command.
The Examiner’s proposal modifies Armstrong not only to issue a command
in response to an integrity check which locks out a component of the
medical device, but also requires that a device external to the implantable
medical device issue the command, which is not shown or suggested by any
reference and appears to be in opposition to Rueter’s teaching of the medical
device itself issuing the lock-out command.
As set forth above, the Examiner concludes that it would have been
obvious to modify Armstrong to provide the claimed invention because
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Appeal 2015-002930
Application 12/738,056
“such a modification would provide the predictable results of reducing the
risk of harm to the patient”—however, without further evidence or
explanation from the Examiner, we determine that this statement is too
general to provide the required rational reason, consistent with KSR, for
specifically modifying Armstrong’s remote device (e.g., external unit 370),
rather than Armstrong’s implantable medical device (IMD) 200 (for
example), to issue a command to lock out a component of IMD 200.
Thus, based on the foregoing, we do not sustain the rejection of
claim 1. Further, we do not sustain any obviousness rejection of
independent claims 9, 17, 21, and 25, each of which recites a similar
limitation and is rejected for reasons similar to the reasons claim 1 is
rejected. Still further, we do not sustain any of the obviousness rejections of
claims 2, 3, 6—8, 10, 11, 14—16, 19, 20, and 26—30 that depend from the
independent claims.
DECISION
We REVERSE the Examiner’s obviousness rejections of claims 1—3,
6-11, 14—17, 19-21, and 25-30.
REVERSED
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