Ex Parte OlsonDownload PDFPatent Trial and Appeal BoardDec 13, 201612649197 (P.T.A.B. Dec. 13, 2016) Copy Citation 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. 12/649,197 12/29/2009 Nathan Lee Olson P0031801.01/LG10126 5129 12/15/201627581 7590 Medtronic, Inc. (CRDM) 710 MEDTRONIC PARKWAY NE MS: LC340 Legal Patents MINNEAPOLIS, MN 55432-9924 EXAMINER HANKINS, LINDSEY G ART UNIT PAPER NUMBER 3762 NOTIFICATION DATE DELIVERY MODE 12/15/2016 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 @ c ardinal-ip .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NATHAN LEE OLSON Appeal 2014-009810 Application 12/649,1971 Technology Center 3700 Before MICHAEL L. HOELTER, JEREMY M. PLENZLER, and THOMAS F. SMEGAL, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s Final Decision rejecting claims 1, 2, and 4—11 under 35 U.S.C. § 103(a) as being unpatentable over Soltis (US 2007/0282414 Al, pub. Dec. 6, 2007) and Yock (US 2002/0004635 Al, pub. Jan. 10, 2002). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION in accordance with 37 C.F.R. § 41.50(b). 1 Appellants identify Medtronic, Inc. as the real party-in-interest. App. Br. 2. Appeal 2014-009810 Application 12/649,197 CLAIMED SUBJECT MATTER Claim 1, reproduced below, is the sole independent claim. Claims 2 and 4—11 depend from claim 1. 1. An implantable medical device, comprising: a body assembly that provides at least one electrical signal corresponding to a therapy; and a cardiac lead assembly having a proximal portion and a distal portion, the proximal portion in communication with the body assembly to receive the therapy and the distal portion adapted to be coupled to an anatomical structure to transmit the at least one electrical signal to the anatomical structure, the proximal portion having a first stiffness and the distal portion having a second stiffness, wherein the first stiffness is greater than the second stiffness; wherein said proximal portion comprises a first multilumen tubing member having a plurality of longitudinally extending lumens and which extends from the body assembly to the transition zone and the distal portion comprises a second multilumen tubing member a like plurality of longitudinally extending lumens and which extends from the transition zone to a distal portion of the cardiac lead assembly; and wherein at least one of the lumens in the first tubing member is not axially aligned with any of the lumens of the second tubing member. OPINION New Ground of Rejection — Indefiniteness Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims 1, 2, and 4—11 under 35 U.S.C. § 112,12 as being indefinite. As seen above, claim 1 recites wherein said proximal portion comprises a first multilumen tubing member having a plurality of longitudinally extending 2 Appeal 2014-009810 Application 12/649,197 lumens and which extends from the body assembly to the transition zone and the distal portion comprises a second multilumen tubing member a like plurality of longitudinally extending lumens and which extends from the transition zone to a distal portion of the cardiac lead assembly. It is unclear what is meant by “the distal portion comprises a second multilumen tubing member a like plurality of longitudinally extending lumens.” It appears that a verb (e.g., “having”) is missing from the claim. Nevertheless, we decline to guess and fill in missing claim language. Claim 1 also lacks antecedent basis for the term “transition zone.” Although we do not determine that the lack of antecedent basis renders claim 1 indefinite, we note that claim 2 recites that the “implantable medical device of Claim 1 [] further comprises] a transition zone between the proximal portion and the distal portion.” It is unclear whether the transition zone recited in claim 2 is the same transition zone, or one that is different from that recited in claim l.2 For these reasons, we enter a new ground of rejection under 35 U.S.C § 112,12 because those claims are indefinite. In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014) (affirming Board’s conclusion, in context of ex parte appeal, that claims were indefinite “on grounds that they ‘contain[ ] words or phrases whose meaning is unclear.’”). 2 Claim 1 was amended to recite the “transition zone” limitation, which was originally found in dependent claim 3 (now cancelled). Claim 3 depended from claim 2. 3 Appeal 2014-009810 Application 12/649,197 Examiner’s Rejection Although we determine that the claims are indefinite, we are still able to determine that the Examiner’s rejection of those claims cannot be sustained. Claim 1 requires “a first multilumen tubing member” and “a second multilumen tubing member.” The Examiner notes that “[t]he claim as currently worded merely requires a first and second multilumen tubular member, but does not define further structure on coupling these members, merely that they meet at a transition zone.” Ans. 4. The Examiner determines that under “the broadest reasonable interpretation of these features of the claim, along with the inclusion of these features in a ‘cardiac lead assembly’, this claim was interpreted by Examiner to merely define a general cardiac lead with two segments that meet at a transition zone” with “[tjhese segments include[ing] multilumen features, and the lumens of each segment are not axially aligned.” Id. at 4—5. We generally agree with the Examiner’s claim construction, but provide further explanation for clarity. We determine that the claim requires two separate and distinct multilumen tubing members (i.e., the “first multilumen tubing member” and the “second multilumen tubing member”) that are connected by a “transition zone” in some manner with at least one lumen in the “first multilumen tubing member” out of axial alignment with all lumens in the “second multilumen tubing member.” In order to give meaning to the axial misalignment between lumens of the multilumen tubing members, these multilumen tubing members cannot simply be two portions of a single continuous multilumen tubing member. This is consistent with the Specification, which describes separate multilumen tubing members 250, 4 Appeal 2014-009810 Application 12/649,197 262 coupled by a transition zone structure 246. See, e.g., Tflf 103—104, 109, Figs. 19-21. With that claim construction in mind, we turn to the Examiner’s rejections. The Examiner cites Soltis as teaching a lead having “a proximal portion . . . comprising] a first multi-lumen tubing member that extends . . . to the transition zone (pars [0029], [0035], [0088]) and a distal portion . . . comprising] a second multilumen tubing member that extends from the transition zone . . . (pars [0029], [0035], [0088]).” Final Act. 3. Appellant alleges error in these findings. App. Br. 17—19. Initially, we note that, based on the rejection of claim 1, it is difficult to discern what, in Soltis, the Examiner considers as corresponding to the “first multilumen tubing member” and the “second multilumen tubing member” recited in the claims, as the rejection simply repeats the claim language and cites three paragraphs (29, 35, 88) from Soltis without further explanation. In fact, the Examiner offers no meaningful discussion of paragraphs 29 and 35, and only summarily references the disclosure of paragraph 88. Based on the rejection of claim 2, which depends from claim 1 and further defines the “transition zone,” we can determine that the Examiner considers the “deflection location” in Soltis as corresponding to the “transition zone.” Therefore, the first and second “multilumen tubing members” alleged to be present in Soltis must be the portions of lead body 54 extending from opposite ends of deflection location 84. See Final Act. 3 (“Regarding claim 2, Soltis discloses a transition zone between the proximal portion and the distal portion (par [0035], ‘deflection location’).”). Acknowledging that paragraphs 29 and 35 of Soltis do not address “multilumen tubing members,” in the Answer, the Examiner clarifies that 5 Appeal 2014-009810 Application 12/649,197 “[paragraph [0088] was cited to include the multilumen tubular members as required in the claim.”3 Ans. 10. We first look to see whether the portions of Soltis cited by the Examiner teach first and second single lumen members, as this is the initial finding of the Examiner with respect to the “multilumen tubing members” limitation. The Examiner appears to assert that first and second single lumen members are taught by the disclosure in paragraphs 29 and 35 of Soltis. Paragraph 29 of Soltis describes its Figure 2 A, which is reproduced below. 2Copy with citationCopy as parenthetical citation