Ex Parte Honeck et al

Patent Trial and Appeal Board

Feb 8, 2017

12363187 (P.T.A.B. Feb. 8, 2017)

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.
12/363,187 01/30/2009 Jordon D. Honeck P0030537.00/1111-109US01 1507
27581 7590
Medtronic, Inc. (CRDM)
710 MEDTRONIC PARKWAY NE
MS: LC340 Legal Patents
MINNEAPOLIS, MN 55432-9924
EXAMINER
SO, ELIZABETH K
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
02/10/2017 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 @ c ardinal-ip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JORDON D. HONECK and ROBERT T. SAWCHUK
Appeal 2015-0039051
Application 12/363,1872
Technology Center 3700
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
ROBERT L. KINDER, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final rejection of claims 1, 2, and 5—9. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Specification (“Spec.,” filed Jan. 30,
2009) and Appeal Brief (“Br.,” filed Aug. 7, 2014), as well as the Final
Office Action (“Final Action,” mailed Jan. 17, 2014) and the Examiner’s
Answer (“Answer,” mailed Dec. 4, 2014).
2 According to Appellants, “[t]he real party in interest is Medtronic, Inc.”
Br. 2.
Appeal 2015-003905
Application 12/363,187
According to Appellants, the invention relates “to medical devices
that deliver cardiac pacing.” Spec. 11. Claim 1 is the only independent
claim on appeal. See Br., Claims App. We reproduce claim 1, below, as
representative of the appealed claims.
1. A method comprising:
delivering cardiac pacing therapy from a medical device
to a chamber of a heart via a first electrode configuration;
determining that the delivery of cardiac pacing therapy via
the first electrode configuration inadequately captures the
chamber;
delivering cardiac pacing therapy to the chamber of the
heart via a plurality of additional electrode configurations in
response to the determination that the delivery of cardiac pacing
therapy via the first electrode configuration inadequately
captures the chamber; and
determining a capture characteristic for each of the
additional electrode configurations based on the delivery of
cardiac pacing therapy to the chamber of the heart via the
plurality of additional electrode configurations:
providing the capture characteristics to a user;
receiving an indication from a user indicating one of the
additional electrode configurations; and
selecting one of the additional electrode configurations
based at least in part on the indication^]
Br., Claims App.
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Appeal 2015-003905
Application 12/363,187
REJECTION AND PRIOR ART* * 3
The Examiner rejects claims 1,2, and 5—9 under 35 U.S.C. § 103(a) as
unpatentable over Helland (US 6,640,136 Bl, iss. Oct. 28, 2003). Final
Action 6—10; Answer 2—6.
ANALYSIS
As set forth above, independent claim 1, from which each of
remaining claims 2 and 5—9 depends, recites “selecting one of the additional
electrode configurations” for which capture configurations are determined
after therapy is delivered based on such additional electrode configurations.
See Br. 5—7. Thus, we agree with Appellants that the Examiner is “incorrect
. . . that the user selected configuration (user indicated configuration) need
not be from among the previously available configurations (additional
electrode configurations).” Appeal Br. 5.
Nonetheless, we sustain the rejection because the Examiner made
alternative findings that Appellants do not address. We agree with
Appellants that it is insufficient for the Examiner to support the rejection by
relying on a determination that “[i]t would have been obvious ... to have
modified Helland’s method to further allow a user to select from additional
electrode configurations that have not necessarily been selected or tested
yet” (i.e., to allow selection from additional electrode configurations that are
not “previously available configurations” as set forth in the claim). Final
Action 7; see, e.g., Br. 5. Specifically, we sustain the rejection because the
Examiner also finds that Helland teaches “selecting one of the additional
3 The Examiner withdraws an indefmiteness rejection made in the Final
Action. Notice of Panel Decision mailed May 15, 2014; Final Action 5.
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Appeal 2015-003905
Application 12/363,187
electrode configurations” as claimed, and Appellants do not argue
persuasively that the Examiner’s finding is erroneous. In particular, the
Examiner finds that “Fig. 4 shows testing (303) before selection (304) so
Helland shows pre-testing electrode configurations before selecting one out
of the plurality of existing electrode configurations. This meets the user
indication/selection of [cjlaim 1.” Final Action 4. Appellants do not
address this portion of Helland or this finding of fact in the Appeal Brief,
and Appellants did not file a Reply Brief. For these reasons, we sustain the
rejection of claim 1 and its dependent claims.
DECISION
We AFFIRM the Examiner’s obviousness rejection of claims 1, 2,
and 5—9.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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