Ex Parte Haefner

Patent Trial and Appeal Board

Sep 26, 2016

12983565 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/983,565 01/03/2011
11050 7590 09/28/2016
SEAGER, TUFTE & WICKHEM, LLP
100 South 5th Street
Suite 600
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Paul Haefner
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.
1001.3654102 1639
EXAMINER
ALTER MORSCHAUSER, ALYSSA MARGO
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
BSC.USPTO@stwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL HAEFNER
Appeal2014-009253
Application 12/983,565
Technology Center 3700
Before: LINDA E. HORNER, BEYERL Y M. BUNTING, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 1-10 and 21-30. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal2014-009253
Application 12/983,565
CLAIMED SUBJECT MATTER
The claims are directed to subcutaneous cardiac signal discrimination
employing non-electrophysiologic signals. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A device, comprising:
an implantable housing;
a plurality of subcutaneous non-intrathoracic electrodes
configured to sense a plurality of electrical signals;
a sensor that senses a non-electrophysiologic signal; and
a signal processor provided in the housing and coupled to
the sensor and the plurality of subcutaneous non-intrathoracic
electrodes, the processor configured to initiate a detection
window at a start time determined from use of the non-
electrophysiologic signal, and to identify a cardiac signal from
the plurality of electrical signals using the detection window.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Turcott
Natarajan
Mai
Arand
US 6,409,675 Bl
US 6,501,983 Bl
US 6,643,548B1
US 7,096,060 B2
REJECTIONS
June 25, 2002
Dec. 31, 2002
Nov. 4, 2003
Aug. 22, 2006
Claims 1-5, 21-27, and 29 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Arand and Turcott.
Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Arand, Turcott, and Natarajan.
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Appeal2014-009253
Application 12/983,565
Claims 8-10, 28, and 30 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Arand, Turcott, and Mai.
OPINION
The rejections under 35 U.S.C. § 103(a) are predicated on the
Examiner taking the position that Arand is prior art to the claims because
Appellants are entitled only to the filing date of the parent application
(10/784,478, now U.S. 7,865,233 B2), namely February 23, 2004, and are
not entitled to claim priority back to the filing date of Provisional
Application No. 60/462,272 ('272 Provisional), namely April 11, 2003. As
such, the issue presented by this appeal is whether the claims are entitled to
the benefit of the filing date of the '272 Provisional.
Priority
The Examiner finds that "[t]he provisional application [60/462,272]
does not provide support for 'subcutaneous non-intrathoracic electrodes"' in
independent claim 1. Final Act. 3. Thus, the Examiner considers the
priority date for the claims "to be February 23, 2004 which is the filing date
of parent application 10/784478 (now US 7,865,233[])." Id.
In support of the "subcutaneous non-intrathoracic electrodes"
limitation, Appellants point to pages 18 through 22 of the '272 Provisional
that discuss hybrid systems with "both subcutaneous and one or more of
transvenous, epicardial, and/or intrathoracic cardiac stimulation
capabilities." Appeal Br. 9. One such system is a "[h]ybrid system minus
any intrathoracic leads." Id. at 10 (citing '272 Provisional 22:26-34).
Appellants explain that this limitation is disclosed because "[t]he
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Appeal2014-009253
Application 12/983,565
specification first highlights the distinction between subcutaneous and
intrathoracic and later illustrates a system implanted with subcutaneous leads
but without the intrathoracic lead, making the disclosed system non-
intrathoracic." Id.
The Examiner responds that "there is no part of the specification that
provides for nonintrathoracic1 electrodes" and that "[h ]ow it is introduced
into the body ... does not equate to where it is implanted in the body."
Answer 11. This statement is unsupported in view of the evidence provided
by Appellants. Page 22 of the Provisional application describes a hybrid
system that does not have any "intrathoracic leads" when initially implanted.
'272 Provisional 22:26-34; Appeal Br. 10. The previous pages ('272
Provisional 18-19; Appeal Br. 9) clarify that hybrid systems include
subcutaneous leads, making the subcutaneous leads of this embodiment
"non-intrathoracic electrodes" consistent with the language of claim 1.
Thus, Appellant's argue persuasively that the "subcutaneous non-
intrathoracic electrodes" of claim 1 finds support in the '272 Provisional.
35 U.S.C. §103(a) - Obviousness
As Appellants argue persuasively that the present application is
entitled to the April 11, 2003 filing date of the '272 Provisional, Arand (filed
June 27, 2003) is not available as prior art. As all of the 35 U.S.C. § 103(a)
rejections rely on Arand, we do not sustain these rejections.
1 We note that the Examiner's reading of "intrathoracic" as meaning "within
the thorax" (Final Act. 2) appears inconsistent with the use of the term in
Appellants' Specification.
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Appeal2014-009253
Application 12/983,565
DECISION
The Examiner's rejection of claims 1-10 and 21-30 is reversed.
REVERSED
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