Ex Parte Hill et al

Patent Trial and Appeal Board

Feb 29, 2016

12494690 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/494,690 0613012009
27581 7590 03/02/2016
Medtronic, Inc. (CRDM)
710 MEDTRONIC PARKWAY NE
MS: LC340 Legal Patents
MINNEAPOLIS, MN 55432-9924
FIRST NAMED INVENTOR
Gerard J. Hill
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.
P0030429 .00/LGl 0126 1535
EXAMINER
PHAM, MINH DUC GIA
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
03/02/2016 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):
medtronic_crdm_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERARD J. HILL, ROGIER RECEVEUR,
and VINCENT LARIK
Appeal2013-008341
Application 12/494,690
Technology Center 3700
Before NEALE. ABRAMS, MICHAEL L. WOODS, and
ERIC C. JESCHKE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gerard J. Hill et al. (Appellants) seek our review under 35 U.S.C.
§ 134 from the Examiner's decision rejecting claims 1-21. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
AppealNo.2013-008341
Application No. 12/494,690
THE INVENTION
The claimed invention is directed to an implantable medical device
and to a method of connecting a power source to at least one component that
performs a function of an implantable medical device.
Claims 1 and 11, reproduced below, are illustrative of the subject
matter on appeal.
1. An implantable medical device comprising:
a power source;
at least one component that performs a function of the
implantable medical device; and
at least one acoustic switching circuit between the power
source and the at least one component, wherein the acoustic
switching circuit is configured to receive acoustic signals at
different frequencies and to connect the power source to the at
least one component in response to receiving at least two acoustic
signals of different frequencies.
11. A method comprising:
detecting a first acoustic signal having a first frequency;
detecting a second acoustic signal having a second
frequency; and
connecting a power source to at least one component that
performs a function of an implantable medical device in response
to detecting the first acoustic signal and the second acoustic
signal.
THE PRIOR ART
The Examiner relied upon the following as evidence of
unpatentability:
Cowan
Doron
US 2007 /0078490 Al
US 2008/0243210 Al
2
Apr. 5, 2007
Oct. 2, 2008
AppealNo.2013-008341
Application No. 12/494,690
THE REJECTION
Claims 1-21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Doron and Cowan. 1
OPINION
The Examiner finds that Doron discloses all of the subject matter
recited in Appellants' claim 1 "except for the limitation wherein the two
acoustic signal[s] received have different frequencies." Final Act. 7.
However, it is the Examiner's view that Cowan discloses a controller that
provides "sequential transmission of acoustic energy at different frequencies
(paragraph 90)," and concludes:
Id.
It would have been obvious ... to modify the system as taught
by Doron, with the limitation of using acoustic signals with
different frequencies as taught by Cowan, since such a
modification would provide the predictable results of a system
with the benefits of reduced false activation, and the ability to
activate multiple implantable devices with each respond to a
different frequency.
In response to Appellants' arguments in the Brief, the Examiner points out
that, in paragraph 121, Doron states that "the implantable device 66 can be
configured in some embodiments to be only fully activated upon receipt of
an activation signal followed by a verification signal" (Ans. 4), and that this
1 In the Final Action, claims 1--4 and 10 were provisionally rejected
on the ground of nonstatutory obvious-type double patenting over
claims of copending Application No. 12/494,698. Appellants
abandoned the copending application on September 29, 2012, and the
double patenting rejection was not repeated in the Examiner's
Answer.
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AppealNo.2013-008341
Application No. 12/494,690
"establish[ es] ... that it is known in the art to use acoustic signals having
different frequencies as activation signal for an implantable device" (id. at
6). The Examiner then asserts that
Id.
each receiver-stimulator device in Cowan can be functionally
characterized as similar to a single acoustic transducer (i.e.
embodiment in Fig. 5 of the Doron reference), wherein each
transducer is tuned to respond to a single unique frequency ....
Alternatively, the invention of Doron may be viewed as one
implantable medical device (i.e. a leadless cardiac pacemaker
system), wherein each of the receiver-stimulator can be viewed
as a component of the system, wherein each component can be
activate[d] [sic] using an activation signal with a unique
frequency for selective pacing.
Appellants point out that the Examiner acknowledged that Doron fails
to disclose a system in which the two acoustic signals were of different
frequencies. App. Br. 6. With regard to Cowan, Appellants argue:
Cowan describes the controller-transmitter device using acoustic
signals having different frequencies to activate different devices.
Applicant cannot find any teaching in Cowan that suggests the
acoustic signals having different frequencies are used in any
manner activate a single device as suggested by the Examiner.
Like Doron, the receiver-stimulator devices of Cowan include
only a single transducer tuned to respond to a single frequency.
As such, there is no rational reason as to why one of ordinary
skill in the art would modify the teachings of Doron to include a
second transducer capable of receiving a verification signal
having a different frequency than the activation signal based on
the teachings of Cowan, which has multiple devices that are each
activated by a single frequency acoustic signal. It is irrelevant
that the controller-transmitter of Cowan transmits acoustic
energy at different frequencies intended to activate different
devices.
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AppealNo.2013-008341
Application No. 12/494,690
Id. at 7 (citing Cowan para. 90).
Appellants conclude that "there is no discussion in either Doron or Cowan as
to using acoustic signals at different frequencies to activate a single device
and no rational reason to modify Doron or Cowan to include such a feature."
Id. at 8.
Appellants further assert that the Examiner's conclusion that
paragraph 82 of Doron teaches that acoustic signals of two different
frequencies are provided to activate the implantable device is incorrect, and
challenge the Examiner's interpretation of the operation of this system as
follows:
[T]he configuration of Fig. 6 reduces the voltage threshold
required to generate the activation signal, not the activation
signal and a subsequent verification signal. To reduce the voltage
threshold required to generate the activation signal (the entire
purpose of the configuration of Fig. 6), both transducers would
need to be outputting a voltage. As best understood by Applicant,
both of the acoustic transducers 106, 108 would need to receive
an acoustic signal simultaneously. Therefore, to lower the
voltage threshold to generate the activation signal of a particular
frequency, both transducers would need to be tuned to that
frequency. Thus, although Doron does not specifically state that
the multiple transducers are tuned to the same frequency,
Appellants contend that if they were not, the purpose of the
circuit of Fig. 6 would not be achieved. Additionally, Applicant
notes that Doron equally does not indicate that the transducers
are tuned to different frequencies.
Reply Br. 2-3.
Appellants also take issue with the Examiner's finding in the Answer
regarding the teachings of Cowan, taking the position that this reference
fails to teach connecting the power source to the at least one
component in response to receiving at least two acoustic signals
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AppealNo.2013-008341
Application No. 12/494,690
of different frequencies. Instead, each receiver-stimulator device
of Cowan connects the power source to the at least one
component in response to a single unique frequency.
Id. at 3.
The Examiner has admitted that Doron fails to disclose the limitation
in claim 1 that the two acoustic signals received by the switching circuit
have different frequencies. We agree with the reasoning presented by
Appellants that the teachings of Cowan fail to alleviate this shortcoming.
Therefore, the rejection of independent claim 1 and dependent claims 2-10
is not sustained.
Independent method claim 11 requires the detections of two acoustic
signals having different frequencies in order to connect a power source to at
least one component that performs a function of an implantable medical
device. On the basis of the same reasoning as with claim 1, the rejection of
claim 11 and dependent claims 12-17 is not sustained. The same is the case
with independent claim 18 and dependent claims 19-21, and the rejection of
these claims also is not sustained.
DECISION
The rejection of claims 1-21 is not sustained.
The decision of the Examiner is reversed.
REVERSED
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