Ex Parte Nabutovsky

Board of Patent Appeals and Interferences

Oct 27, 2010

10687846 (B.P.A.I. Oct. 27, 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.
10/687,846 10/17/2003 Yelena Nabutovsky A03P3002-US1 9561
24473 7590 10/27/2010
STEVEN M MITCHELL
PACESETTER INC
701 EAST EVELYN AVENUE
SUNNYVALE, CA 94086
EXAMINER
FLORY, CHRISTOPHER A
ART UNIT PAPER NUMBER
3762
MAIL DATE DELIVERY MODE
10/27/2010 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 YELENA NABUTOVSKY
____________

Appeal 2009-004638
Application 10/687,846
Technology Center 3700
____________

Before: JENNIFER D. BAHR, JOHN C. KERINS, and KEN B. BARRETT,
Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL1

1The 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 2009-004638
Application 10/687,846

2
STATEMENT OF THE CASE
Yelena Nabutovsky (Appellant) appeals under 35 U.S.C. § 134 (2002)
from the Examiner's decision rejecting claims 1-28 under 35 U.S.C. § 102(b)
as anticipated by Stoop (US 6,370,431 B1, iss. Apr. 9, 2002). We have
jurisdiction over this appeal under 35 U.S.C. § 6 (2002).
Claim 1 is representative of the claimed invention:
1. A method of detecting and preventing ventricular arrhythmias,
comprising:
a. detecting at least two premature ventricular contractions (PVCs);
b. determining a difference between morphologies of the at least two
PVCs;
c. comparing said difference to a predetermined morphology
threshold; and
d. determining whether to deliver preventive therapy based on said
comparing step.

SUMMARY OF DECISION
We REVERSE.

OPINION
The Examiner found that claims 1-28 are anticipated by Stoop. With
respect to the method claims 1-12 and 23-28, the Examiner found, in
relevant part, that Stoop describes a method having steps of "detecting at
least two PVCs, determining a difference between their morphologies, and
comparing said morphology difference to a predetermined threshold to
determine whether to deliver preventative therapy (column 2, lines 10-50)."
Ans. 3. With respect to apparatus claims 13-22, the Examiner found, in
Appeal 2009-004638
Application 10/687,846

3
relevant part, that Stoop describes an apparatus with a comparing means.
Ans. 5.
Appellant argues claims 1-28 as a group. Appeal Br. 13. Appellant's
arguments pertain to the "comparing" elements of the claims. Appeal Br.
14-17. Thus, the issue presented in this appeal is whether the Examiner has
demonstrated that Stoop describes a method and/or apparatus having a step
of comparing and/or a comparing means or circuit, as recited in claims 1-28.
With respect to the apparatus claims 13-22, the Examiner has made no
finding as to which components of Stoop describe the "comparing means" or
"comparing circuit" of claims 13-22. Ans. 5 (noting no citations are
provided with respect to this claim element). Thus, we reverse the
Examiner's rejection of claims 13-22 for failing to provide the requisite
factual basis to support a finding of anticipation. See In re Warner, 379 F.2d
1011, 1017 (CCPA 1967) (the examiner has the initial duty of supplying the
requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in the factual basis).
With respect to method claims 1-12 and 23-28, the Examiner found
that Stoop describes the comparing step at col. 2, ll. 10-50. In the claims,
the comparing is between 1) a difference between morphologies of at least
two PVCs and 2) a morphology threshold. While Stoop mentions the words
"T-wave" and "morphology" in the portions cited by the Examiner, we do
not find the series of steps required by the comparing step of the claims.
The Examiner states that T-waves are part of a PVC and that "comparing the
T-wave data from a current QT interval to a past mean value" reads on
"comparing at least two PVCs." Ans. 5. Even if every PVC had a T-wave
Appeal 2009-004638
Application 10/687,846

4
and Stoop taught "comparing at least two PVCs," the claimed comparison
step requires comparing a difference between the morphologies of at least
two PVCs and a morphology threshold, not "comparing at least two PVCs."
Thus, we reverse the Examiner's rejection of claims 1-12 and 23-28 for
failing to demonstrate that each and every claimed element is expressly or
inherently described in Stoop. See, e.g., RCA Corp. v. Applied Digital Data
Sys., Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984) ("Anticipation is established
only when a single prior art reference discloses, expressly or under the
principles of inherency, each and every element of a claimed invention.").

DECISION
We reverse the Examiner's decision.

REVERSED

mls

STEVEN M MITCHELL
PACESETTER INC
701 EAST EVELYN AVENUE
SUNNYVALE, CA 94086