Ex Parte Haefner

Board of Patent Appeals and Interferences

Jul 12, 2010

11019497 (B.P.A.I. Jul. 12, 2010)

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.
11/019,497 12/21/2004 Paul Allan Haefner GUID.630PA 1600
51294 7590 07/12/2010
HOLLINGSWORTH & FUNK
8500 Normandale Lake Blvd
SUITE 320
MINNEAPOLIS, MN 55437
EXAMINER
LEE, YUN HAENG NMN
ART UNIT PAPER NUMBER
3766
MAIL DATE DELIVERY MODE
07/12/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL ALLAN HAEFNER
____________

Appeal 2009-007855
Application 11/019,497
Technology Center 3700
____________

Before: LINDA E. HORNER, JENNIFER D. BAHR, and
STEVEN D.A. MCCARTHY, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007855
Application 11/019,497
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STATEMENT OF THE CASE
Paul Allan Haefner (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1-21. Reply Br. 3. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
THE INVENTION
Appellant’s claimed invention is an implantable cardiac device and
methods of use. Spec. 1:5-7. Claim 1, reproduced below, is representative
of the subject matter on appeal.
1. An implantable cardiac device, comprising:
a housing having a first face opposing a second face, and
an edge extending from a perimeter of the first face to a
perimeter of the second face;
a pulse generator comprising a controller provided in the
housing; and
a plurality of electrodes coupled to the pulse generator
and arranged in a spaced relationship on the housing;
wherein the controller is configured to measure a
plurality of signals using a plurality of electrode combinations
and to automatically select a particular electrode combination of
the plurality of electrode combinations that provides for
improved cardiac signal sensing relative to other ones of the
plurality of electrode combinations based on the measured
signals.
THE REJECTIONS
Appellant seeks review of the following rejections by the Examiner:2
1. Rejection of claims 1-5, 7, 8, 11-16, and 18-21 under 35 U.S.C.
§ 102(b) as anticipated by Cao (US 2001/0034487 A1).

2 These rejections are new grounds of rejection in the Examiner’s Answer.
The Examiner’s Answer does not include the rejection of claims 1-21 under
35 U.S.C. § 103(a) as unpatentable over Cao and Klein that was made in the
Final Office Action. We treat this rejection as withdrawn.
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2. Rejection of claims 6, 9, 10, and 17 under 35 U.S.C. § 103(a) as
unpatentable over Cao.
ANALYSIS
1. Rejection of claims 1-5, 7, 8, 11-16, and 18-21 under 35 U.S.C. § 102(b)
as anticipated by Cao (2001/0034487 A1)
Claims 1-5, 8, 11-16, and 19-21
Appellant argues claims 1-5, 8, 11-16, and 19-21 as a group.3 Reply
Br. 12-18. We select claim 1 as the representative claim, and claims 2-5, 8,
11-16, and 19-21 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
The issue before us is whether Cao discloses a controller configured
to automatically select the signal, from a plurality of signals produced by
electrode combinations, that provides for improved cardiac signal sensing
relative to the other signals, as called for in claim 1.
Claim 1 is directed to an implantable cardiac device that includes a
controller configured to automatically select the signal, from a plurality of
signals produced by electrode combinations, that provides for improved
cardiac signal sensing relative to the other signals. Appellant’s Specification
does not provide a lexicographical definition of an “improved cardiac
signal,” and describes, by way of example, that the controller may select the

3 Appellant has not argued claims 12 and 21 separately from claim 1.
Appellant mentions independent claims 12 and 21 under a separate heading,
and expresses a preference that these claims be considered separately;
however, Appellant merely points out a limitation recited by each claim
(Reply Br. 17). 37 C.F.R. § 41.37(c)(1)(vii) (2009) (“[a] statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.”). Appellant admits that independent
claims 12 and 21 “each concern subject matter similar to independent claim
1,” points to no distinction between claims 12 and 21 and claim 1, and relies
upon the same arguments made for independent claim 1. Reply Br. 17.
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combination of electrodes having “the greatest magnitude cardiac signal.”
Spec. 12:7-10.
Cao discloses an Insertable Loop Recorder (ILR) that is inserted in a
patient’s body to sense physiologic signals. Cao 1, para. [0001]. The ILR
includes multiple electrodes 3 for producing multiple sensing vectors
between pairs of electrodes, such as electrodes a and b (a-b) producing
sensing vector y1, and electrodes c and a (c-a) producing sensing vector y2.
Cao 3, paras. [0031], [0035]; 4, para. [0041]; fig. 3A.
Cao discloses combination circuits that select from among the
multiple sensing vectors the maximum rectified signal (ytotal), where (ytotal)
is:
ytotal = Max{|y1|, |y2|,…,|yi|}; where
i=1, 2,…N or combination of any vectors; and
N=Number of vectors.
Cao 4, paras. [0036]-[0041]; fig. 4. For example, where there are two sensor
vectors, the equation will be ytotal=Max{|y1|, |y2|}. Cao 4, para. [0041].
Given this, Cao discloses a controller (combination circuits shown in
Figure 4) configured to automatically select the signal (ytotal) from among a
plurality of signals (e.g., sensor vectors |y1|, |y2|) produced by electrode
combinations (e.g., a-b, c-a). Further, just as Appellant’s device
automatically selects the signal having “the greatest magnitude cardiac
signal” (Spec. 12: 7-10), Cao’s controller likewise selects the signal having
the maximum rectified signal (Cao 4, paras. [0036]-[0041]; fig. 4).
Accordingly, Cao discloses a controller configured to automatically select
the signal, from a plurality of signals produced by electrode combinations,
that provides for improved cardiac signal sensing relative to the other signals
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as called for in claim 1. We are unpersuaded by Appellant’s arguments to
the contrary.
Appellant argues that ytotal is a combined signal and not a signal from a
“particular electrode combination” as called for in claim 1, because Cao
refers to ytotal as a “combination signal.” Reply Br. 14-15. Appellant
appears to use the term “combined” in the sense that two signals have been
summed to become one; however, Cao uses the term “combined” in the
sense that the signal (ytotal) may be composed of time segments of a plurality
of signal vectors (e.g., y1 and y2). For example, if during a first time period
sensor vector y1 is the maximum rectified signal, then sensor vector y1 will
be selected to be ytotal for that period, and if during a sequential second time
period the sensor vector y2 is the maximum rectified signal, then sensor
vector y2 will be selected as ytotal for that period. As such, Cao’s
“combination signal” ytotal over a first and second time period would be a
combination of y1 and y2.
Appellant argues that ytotal is not a signal from a “particular electrode
combination” as called for in claim 1, because Cao refers to capturing
“signals” for appropriate sensing. Reply Br. 14 (emphasis Appellant’s)
(citing Cao 4, para. [0041]). We disagree with Appellant’s reading of Cao.
Cao is referring in this instance to the plurality of sensor vectors, and not to
the combined signal ytotal. Cao 4, para. [0041].
Appellant makes other arguments based on additional capabilities of
Cao’s device, such as user selection of signal vectors (electrode pairs), and
automatic selection of a second electrode pair when the signal amplitude of a
first electrode pair drops. Reply Br. 12-13, 22. These arguments are not
relevant because our finding that Cao discloses automatic signal selection as
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called for in claim 1 is based on the embodiment discussed supra, and is not
based upon any of these additional capabilities.
Appellant argues that Cao’s plurality of signals (e.g., sensor vectors
|y1|, |y2|) is delivered to a differential amplifier, and that a differential
amplifier does not automatically select a signal as called for in claim 1.
Reply Br. 16, 25-264. Again, we disagree with Appellant’s reading of Cao.
Cao describes ytotal in detail, specifying that the combined circuit selects the
signal vector having the greatest rectified signal. Cao 4, paras. [0036]-
[0041]. Following this, Cao describes how ytotal is processed by the
remainder of the device, representing the input mechanism 38 in the block
diagram of Figure 5 as a differential amplifier “for purposes of simplicity.”
Cao 4, para. [0043]; fig. 5. A person of ordinary skill in the art, taking Cao’s
disclosure as a whole, would recognize that ytotal is more accurately
described by the detailed explanation, rather than by the shorthand reference
to a differential amplifier.
Cao discloses a controller configured to automatically select the
signal, from a plurality of signals produced by electrode combinations, that
provides for improved cardiac signal sensing relative to the other signals as
called for in claim 1. Claims 2-5, 8, 11-16, and 19-21 fall with claim 1.
Claims 7 and 18
The issue with regard to claims 7 and 18 is whether Cao discloses a
“predetermined threshold” as called for in claims 7 and 18.
The Examiner construed the “predetermined threshold” of claims 7
and 18 to be broad enough to permit the predetermined threshold to be based
upon a comparison between the sensed signals. Ans. 4, 9. Based on this

4 Referring to Cao’s input mechanism 38 depicted in Figure 5 and described
in Cao 4, para. [0043].
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claim construction, the Examiner found that Cao discloses use of a “non-
maximal signal” as a predetermined threshold, meaning that the signal (from
an electrode combination) having the second greatest amplitude serves as the
predetermined threshold to select the signal having the greatest magnitude.
Ans. 9. We conclude that this claim construction is overly broad.
Independent claim 1 requires the controller to be configured to
automatically select the signal, from a plurality of signals produced by
electrode combinations, that provides for improved cardiac signal sensing
relative to the other signals. Similarly, independent method claim 12
includes the step of selecting a sense vector that provides for improved
cardiac signal sensing relative to the other sense vectors. Consequently,
claims 1 and 12 require a comparison of the signals (sense vectors) from
particular electrode combinations. Claim 7 depends from independent claim
1 and adds the limitation that the controller selects the electrode combination
having an amplitude or signal-to-noise ratio that exceeds a predetermined
threshold. Similarly, claim 18 depends from independent claim 12 and adds
the limitation of selecting the sense vector that provides for improved
cardiac sensing based upon a predetermined threshold. In order for claims 7
and 18 to further limit their respective independent claims, as a dependent
claim must, the predetermined threshold requires more than simply
comparing the plurality of signals for selection of the signal that provides for
improved cardiac signal sensing as called for in independent claims 1 and
12.
The Examiner’s claim construction would render the limitations of
claims 7 and 18 meaningless as such comparison is already required by
independent claims 1 and 12, respectively. Because the Examiner’s finding
is based upon an improper claim construction, we agree with Appellant that
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Cao’s “non-maximal” signal (the comparison between the plurality of
signals from electrode combinations) is not a predetermined threshold as
called for in claims 7 and 18. Reply Br. 26.
2. Rejection of claims 6, 9, 10, and 17 under 35 U.S.C. § 103(a) as
unpatentable over Cao
Claims 6 and 17
The Examiner found that it was well known in the art to sense skeletal
muscle activity for the purpose of noise detection, citing to Whigham (US
4,779,617) as evidence. Ans. 5. Appellant argues that neither Cao nor
Whigham discloses controller selection of an electrode combination from a
plurality of electrodes that preferentially provides for sensing of skeletal
muscle activity as called for in claims 6 and 17. Reply Br. 19.
The issue before us is whether Cao in combination with well known
knowledge in the art would have led one having ordinary skill in the art to a
controller that selects an electrode combination from a plurality of electrodes
that preferentially provides for sensing of skeletal muscle activity as called
for in claims 6 and 17.
Claim 6 depends from independent claim 1, adding the limitation that
“the arrangement of electrodes facilitates controller selection of a first
electrode combination that preferentially provides for sensing of cardiac
activity and a second electrode combination that preferentially provides for
sensing of skeletal muscle activity.” Similarly, claim 17 depends from
independent method claim 12, and adds the limitation of “selecting a first
sense vector that preferentially provides for sensing of cardiac activity and a
second sense vector that preferentially provides for sensing of skeletal
muscle activity.” We interpret claims 6 and 17 to require selection of an
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electrode combination (sense vector) that provides for sensing of skeletal
muscle activity.
We determined in the analysis of the rejection of claim 1, supra, that
Cao discloses a controller configured to automatically select the signal, from
a plurality of signals produced by electrode combinations, that provides for
improved cardiac signal sensing relative to the other signals. Consequently,
the distinction between Cao and the subject matter of claims 6 and 17 is use
of a second electrode combination for sensing skeletal muscle activity.
Whigham5 discloses an implantable pacemaker that includes a system for
rejecting noise, to include noise caused by skeletal muscle activity that is
sensed in a cardiac signal, was well known in the art at the time of
Appellant’s invention. Whigham, col. 1, ll. 5-7; col. 2, ll. 3-5. Whigham’s
device detects noise from skeletal myopotentials, which is later analyzed and
used to reject noise that occurs during the sensing interval, such as by use of
a filter 12 that leaves only cardiac frequencies of interest. Whigham, col. 3,
ll. 35-41, 45-49. We conclude a person of ordinary skill in the art armed
with the knowledge of Cao’s controller configured to automatically select
the signal from a plurality of signals produced by electrode combinations,

5 Appellant contends to have properly traversed the Examiner’s Official
Notice, so that Whigham may not be considered. Reply Br. 18-19.
However, Appellant simply “invited” the Examiner to provide a reference
for the Official Notice, but did not provide evidence or rationale as to why
the noticed fact is not considered to be well-known in the art. Response
under 37 C.F.R. § 1.111, filed Nov. 20, 2006, page 9. Such is not a proper
traverse, and the reference may be considered. See Manual of Patent
Examining Procedure § 2144.03C (8th ed., Rev. 8, July 2008) (“To
adequately traverse such a finding, an applicant must specifically point out
the supposed errors in the examiner's action, which would include stating
why the noticed fact is not considered to be well-known in the art.”); see
also 37 C.F.R. § 1.111(b);
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and the knowledge that skeletal muscle activity can be detected and filtered
from cardiac signals of interest, would have been led to the subject matter of
claims 6 and 17 for the purpose of noise detection, i.e., to improve signal
quality.
Claim 9
Claim 9 depends from claim 1, and adds the limitation that “the
plurality of electrodes comprises at least three electrodes positioned on the
edge of the housing and wrapping over a portion of the first and second
faces of the housing.” The issue is whether Cao discloses the at least three
electrodes positioned as called for in claim 9.
The Examiner found that Cao does not disclose electrodes wrapping
over a portion of the first and second faces of the housing, but concluded “it
would have been obvious to one of ordinary skill in the art to have the
electrodes wrapping over a portion of the first and second faces of the
housing since Appellant does not give any criticality to the wrapping-over of
the electrodes.” Ans. 5-6, 9-10. We cannot sustain this rejection because
the Examiner’s approach does not provide any rationale for the modification,
but rather attempts to shift the burden to the Appellant to prove criticality.
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007), quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.”).
Claim 10
Claim 10 depends from claim 1, and adds the limitation that “the
plurality of electrodes comprises at least three electrodes positioned on the
first face of the housing and at least three electrodes positioned on the
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second face of the housing.” The issue is whether modification of Cao’s
device from having at least three electrodes on either the first or the second
face of the housing, to having at least three electrodes on each of the first
and second faces of the housing would have been an obvious duplication of
parts.
Appellant does not contend that the subject matter of claim 10
produces a new or unexpected result. Reply Br. passim. Appellant contends
that such a modification is not merely a duplication of parts because Cao
discloses use of signal vectors across pairs of electrodes in orthogonal
relationships, and such use would be “problematic” in the modified device
where an electrode pair could be positioned on the first and second faces.
Reply Br. 21. Appellant’s argument is unconvincing because it is not
commensurate with the claim. Claim 10 requires at least three electrodes on
each of the first and second faces of the housing, but does not require use of
an electrode combination (pair) for producing a sensor vector consisting of
one electrode on the first and one on the second faces.
We agree with the Examiner (Ans. 6), that modification of Cao’s
device from having at least three electrodes on either the first or the second
face of the housing, to having at least three electrodes on each of the first
and second faces of the housing would have been an obvious duplication of
parts. In re Harza, 274 F.2d 669, 671 (CCPA 1960) (“It is well settled that
the mere duplication of parts has no patentable significance unless a new and
unexpected result is produced”).
DECISION
We AFFIRM the Examiner’s decision to reject claims 1-5, 8, 11-16,
and 19-21 under 35 U.S.C. § 102(b) as anticipated by Cao.
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We REVERSE the Examiner’s decision to reject claims 7 and 18
under 35 U.S.C. § 102(b) as anticipated by Cao.
We AFFIRM the Examiner’s decision to reject claims 6, 10, and 17
under 35 U.S.C. § 103(a) as unpatentable over Cao.
We REVERSE the Examiner’s decision to reject claim 9 under 35
U.S.C. § 103(a) as unpatentable over Cao.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED-IN-PART

nhl

HOLLINGSWORTH & FUNK
8500 NORMANDALE LAKE BLVD
SUITE 320
MINNEAPOLIS MN 55437