Ex Parte Gunderson et al

Patent Trial and Appeal Board

Oct 22, 2018

14458502 (P.T.A.B. Oct. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/458,502 08/13/2014
27581 7590 10/24/2018
Medtronic, Inc. (CVG)
8200 Coral Sea Street NE.
MS:MVC22
MINNEAPOLIS, MN 55112
FIRST NAMED INVENTOR
Bruce D. Gunderson
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.
C0007309.USI2/LG10l26.L33 6330
EXAMINER
PIA TES KI, ERIN M
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
10/24/2018 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):
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 BRUCE D. GUNDERSON and MARSHALL S. STANTON 1
Appeal2017-009714
Application 14/458,502
Technology Center 3700
Before DONALD E. ADAMS, ELIZABETH A. LA VIER, and
RYAN H. FLAX, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision under 35 U.S.C. § 134(a) involving claims directed
to an implantable medical system. Claims 1, 2, 4, 5, 8-11, and 23 are on
appeal as rejected under 35 U.S.C. § 103(a). We have jurisdiction under 35
U.S.C. § 6(b ).
We reverse.
1 Appellants identify the Real Party in Interest as "Medtronic, Inc." Appeal
Br. 3. Herein we reference the Specification of Aug. 13, 2014 ("Spec.");
Final Office Action of June 6, 2016 ("Final Action"); Appeal Brief of Feb.
27, 2017 ("Appeal Br."); Examiner's Answer of May 11, 2017 ("Answer");
and Reply Brief of July 7, 2017 ("Reply Br.").
Appeal2017-009714
Application 14/458,502
STATEMENT OF THE CASE
Independent claim 1 is representative and is reproduced below:
1. An implantable medical system, comprising:
at least one medical electrical lead including:
a plurality of electrodes carried by the at least one medical
electrical lead; and
a plurality of electrical conductors, each of the plurality of
electrical conductors electrically connected to a respective one of
the plurality of electrodes;
an implantable medical device adapted to be coupled to
the at least one medical electrical lead, the implantable medical
device including:
a sensing module electrically coupled to the plurality of
electrical conductors when the implantable medical device is
coupled to the at least one medical electrical lead,
the sensing module configured to sense a cardiac signal
using at least one of the plurality of electrodes; and
a controller electrically coupled to the sensing module and
configured to receive the cardiac signal, determine a slope of the
cardiac signal, compare the slope of the cardiac signal to a short
circuit threshold, and detect a short circuit event within the
medical electrical lead when the slope of the cardiac signal
exceeds the short circuit threshold.
Appeal Br. 22 (Claims Appendix).
The following rejections are appealed:
Claims 1, 11, and 23 stand rejected under 35 U.S.C. § I03(a) over
Bomzin. 2 Final Action 3.
2 US 2013/0253352 Al (published Sept. 26, 2013) ("Bomzin").
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Application 14/458,502
Claim 2 stands rejected under 35 U.S.C. § I03(a) over Bomzin and
Splett. 3 Id. at 5.
Claims 4 and 8-10 stand rejected under 35 U.S.C. § I03(a) over
Bomzin, Jorgenson, 4 and Indla. 5 Id.
Claim 5 stands rejected under 35 U.S.C. § I03(a) over Bomzin,
Jorgenson, Indla, and Splett. Id. at 11.
DISCUSSION
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting aprimafacie case ofunpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
"In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls. What matters is the objective reach of the claim. If the
claim extends to what is obvious, it is invalid under§ 103." KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398,419 (2007). However, a proper§ 103 analysis
requires "a searching comparison of the claimed invention-including all its
limitations-with the teaching of the prior art." In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995). "[D]ependent claims are nonobvious if the
independent claims from which they depend are nonobvious." In re Fritch,
972 F.2d 1260, 1266 (Fed. Cir. 1992).
The Examiner determined claims 1, 11, and 23 would have been
obvious over Bomzin. Final Action 3--4, 12-13, and Answer 3--4, 12-
3 US 6,599,242 B 1 (issued July 29, 2003) ("Splett").
4 US 2002/0120307 Al (published Aug. 29, 2002) ("Jorgenson").
5 US 2010/0286542 Al (published Nov. 11, 2010) ("Indla").
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Appeal2017-009714
Application 14/458,502
(collectively citing Bomzin Abstract, ,r,r 4, 5, 8, 11, 14, 17, 39, 40, 45, 58,
61, 78, 93, 138, 140, 142, Figures 1, 2, 4A-6, 9, llA, llB, 12).
Appellants argue Bomzin fails to disclose a "sensing module
configured to sense a cardiac signal," "a controller ... configured to receive
the cardiac signal, determine a slope of the cardiac signal, compare the slope
... to a short circuit threshold, and detect a short circuit event within the
medical electrical lead." Appeal Br. 5 (underlining omitted). Appellants
argue Bomzin's disclosed analysis of cardiac signals to ascertain a "slew
rate" does not satisfy the aforementioned slope determination and
comparison thereof to a threshold to detect a short circuit event based on the
cardiac signal slope exceeding the threshold. Id. at 5---6. The distinction
made by Appellants' argument is between the Bomzin reference's teaching
of using slope measurements for two signals, each compared to a
predetermined slope threshold and then to one another to detect a short
between two electrodes as compared to claim 1 's required use of a slope
measurement of a signal compared to a predetermined threshold to detect a
short in an electrical lead, i.e., a short in one wire measured by one signal as
claimed versus between two wires and two signals as in Bomzin. Appellants
argue the claims require using just a single cardiac signal to detect a short
circuit, while Bomzin requires multiple sensed signals to do this detection.
Appeal Br. 8.
In response, the Examiner states:
The flow chart in Fig. 9 of the Bomzin reference, in addition,
demonstrates that a fault condition may be declared regardless of
whether more than one signal shows a fault condition, illustrating
that each lead is evaluated separately (Bomzin, Fig. 9, steps 916,
920, and 924, first and second signals are separately evaluated).
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Appeal2017-009714
Application 14/458,502
Furthermore, the appellant's claim language explicitly leaves
open the possibility of more than one signal being considered in
the analysis, with the limitations "at least one medical electrical
lead . . . . . . configured to sense a cardiac signal using at least
one of the plurality of electrodes." The appellant's claim
language is therefore broad enough to leave open the possibility
that the slope determination in a single signal is used in
conjunction with the slope determination in a different signal to
determine whether a short circuit condition exists.
Answer 12-13.
We conclude the balance of evidence favors Appellants' position. All
appealed claims require that "a cardiac signal" is sensed, that this cardiac
signal, received at a controller, is analyzed to "determine a slope," then "the
slope of the cardiac signal [is compared] to a short circuit threshold," and "a
short circuit [is detected] ... when the slope of the cardiac signal exceeds
the short circuit threshold" ( emphases added to underscore that it is the same
cardiac signal). Thus, as argued by Appellants, a short circuit in an
electrical lead is identified based on a single cardiac signal that has a slope
exceeding a threshold.
Compared to the claimed system, Bomzin discloses detection of a
variety of electrical lead failures by sensing and analyzing cardiac signals,
disclosing that a single cardiac signal's "slew rate," which is a slope, can be
compared to a respective threshold to determine whether the signal is
physiologic or non-physiologic, the latter representing a fault in a lead. This
generalized process of comparing a single cardiac signal to a threshold is
taught by Bomzin as useful for detecting several lead failures, such as
breaks, fractures, and open circuits, for example, but not short circuits. See
Bomzin ,r,r 53-100, Figures 4A-6, 9. As argued by Appellants, Bomzin's
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Appeal2017-009714
Application 14/458,502
disclosure relating to determining a short circuit ( as opposed to other types
of faults) requires sensing two signals from two electrodes, determining that
each is non-physiologic, and then determining whether those two non-
physiologic signals correlate, and thus represent, a short circuit between the
two respective electrodes. See id. ,r,r 137-160, Figures 1 lA-12. No other
way of detecting a short circuit is taught or suggested by Bomzin; this
multiple-signal analysis is not the claimed invention and would not have
rendered the claimed invention obvious.
For the aforementioned reasons, we conclude the Examiner has not
established a prima facie case that the claims would have been obvious over
Bomzin. Because each obviousness rejection relies on the same
determinations concerning the Bomzin reference, we likewise conclude that
each obviousness rejection suffers the same deficiency.
SUMMARY
The obviousness rejections under 35 U.S.C. § 103(a) are each
reversed.
REVERSED
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