Ex Parte Petersen et al

Patent Trial and Appeal Board

Jul 25, 2016

13277290 (P.T.A.B. Jul. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/277,290 10/20/2011
27581 7590 07/27/2016
Medtronic, Inc. (CRDM)
710 MEDTRONIC PARKWAY NE
MS: LC340 Legal Patents
MINNEAPOLIS, MN 55432-9924
FIRST NAMED INVENTOR
Christopher M. Petersen
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.
P0011283.USV4 1248
EXAMINER
D ABREU, MICHAEL JOSEPH
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
07/27/2016 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 CHRISTOPHER M. PETERSEN and
JAMES E. WILLENBRING
Appeal2014-007887
Application 13/277,290
Technology Center 3700
Before MICHELLE R. OSINSKI, JILL D. HILL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Christopher M. Petersen and James E. Willenbring (Appellants)2
appeal under 35 U.S.C. § 134 from the Examiner's final decision rejecting
claims 1-16 and 18 as unpatentable over Snell (US 2002/0143372 Al, pub.
Oct. 3, 2002). Final Act. 5-7. Claims 19-34 are withdrawn (id. at 2), and
1 The rejections of claims 1-18 under 35 U.S.C. § 112 (pre-AIA), first and
second paragraphs, have been withdrawn (Adv. Act. 2 (Nov. 7, 2013)), or
are moot in view of the cancellation of claim 17 (Adv. Act. 2 (Feb. 21,
2014)), and are not before us on appeal.
2 Appellants identify the real party in interest as Medtronic, Inc. Appeal Br.
3.
Appeal2014-007887
Application 13/277,290
claim 17 is cancelled (Adv. Act. 2 (Feb. 21, 2014)). We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
THE CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim on appeal, is reproduced below
and is representative of the claimed subject matter on appeal.
1. A system comprising:
an implantable medical device;
a local programmer configured to program the implantable
medical device;
a remote programmer configured to communicate with the
local programmer over a telecommunication link to initiate a
remote programming session with the implantable medical
device when the remote programmer is located a significant
distance from the implantable medical device, wherein the
remote programmer is configured to, during the remote
programming session, program the implantable medical device
via the local programmer \'l1ith operating parameters defining
operation of the implantable medical device; and
a processor configured to:
in the event the remote programming sess10n
succeeds, operate the implantable medical device
according to the operating parameters following the
remote programming session, and
invoke a fail-safe operation in the event the remote
programming session fails, wherein the processor is
configured to invoke the fail-safe operation by at least
automatically modifying the operating parameters of the
implantable medical device and operating the implantable
medical device according to the modified operating
parameters following the failed remote programming
sess10n.
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Claims 1-10, 12-16, and 18
OPINION
The Examiner finds that Snell teaches all of the limitations of
independent claim 1, except that "Snell is unclear as to whether the
operating parameters are modified and the IMD [implantable medical
device] is operated according to those modified parameters." Final Act. 6.
The Examiner finds that it is considered to be common knowledge or well-
known in the art "for pacemakers ... to revert to or restore a previous
operating/default parameter if the transmitted parameters are not proper, as
the heart would still require treatment" and "the pacemaker does not simply
just shut[]down and not perform i[t]s function because of a transmission
problem, as that would be an unrealistic and unreliable device." Id. The
Examiner concludes that it would have been obvious to "modify the
operating parameters of the IMD and operat[ e] the IMD at the modified or
default parameters in order to provide the predictable results of ensuring the
patient continues to receive the appropriate therapy." Id.
In response to Appellants' challenge regarding the Examiner's factual
assertion in the Final Office Action that it is common knowledge in the
pacemaker art to revert to or restore previous operating parameters or default
parameters if transmitted parameters are not proper, the Examiner provided
documentary evidence in the form of US 6,662,049 Bl (Dec. 9, 2003)
("Miller") in the Advisory Action issued November 7, 2013. The Examiner
maintained the finality of the rejection, determining that the newly added
reference of Miller was added only as evidence to support the prior common
knowledge finding and did not result in a new issue or constitute a new
ground of rejection. Ans. 3.
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As an initial matter, Appellants generally challenge the propriety of
the Examiner in (i) relying on common knowledge in the Final Office
Action without evidentiary support in the record, when the common
knowledge was "not capable of instant and unquestionable demonstration as
being well known" (Appeal Br. 6, 9-10 (emphasis omitted)); (ii) providing
documentary evidence in support of the prior common knowledge finding in
an Advisory Action (id. at 7-8); and (iii) maintaining the finality of the
rejection based on common knowledge in the Advisory Action where it was
necessary for the Examiner to provide documentary evidence in support of
the prior common knowledge finding (Reply Br. 9-10). Appellants
generally contend that they were not afforded a sufficient opportunity to
challenge the evidence. Reply Br. 8.
We find these challenges unpersuasive to compel that any rejection
that relies on the finding of common knowledge by the Examiner must be
reversed. Notwithstanding any alleged procedural deficiencies, Appellants
have been afforded an opportunity to challenge the documentary evidence
on appeal, and have taken advantage of this opportunity through extensive
argument in their Appeal Brief and Reply Brief.
As to the merits, Appellants argue that, even assuming arguendo that
Miller has been properly provided as documentary evidence, "Miller fails to
constitute adequate documentary evidence that the Examiner's assertion in
question is in fact common knowledge or well-known in the art." Appeal
Br. 8. More particularly, Appellants argue that Miller fails to describe next
steps in connection with "transmitting parameters [that] are not proper." Id.
at 9. Appellants argue that Miller instead merely describes, in one passage,
transition to a "fail safe" mode "in the case of a hardware malfunction or
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Application 13/277,290
software deterioration in a microprocessor-based pacemaker due to memory
or power failure." Id. at 8 (citing Miller, 2:3-17). Appellants further argue
that Miller merely describes, in another passage, "that a switch from normal
mode to reset mode in operation of a pacemaker 10 may be caused by
'sensor failure, power or voltage drop, error in or corruption to the parameter
values for the normal mode, RAM failure, and other component-level or
module-level failures.'" Id. at 8-9 (quoting Miller, 6:48-52).
Miller discloses a "normal mode" for pacemakers in which the set of
parameters forthe normal mode are "programmable." Miller, 2:7, 6:15-20.
Miller discloses that the set of parameters for the normal mode "may be
programmed at the factory and/or by telemetry (before and/or after
implantation)." Id. at 6: 17-19. Miller also discloses a "reset mode" for
pacemakers in which the set of parameters for the reset mode are "a fixed set
of default ... parameters." Id. at 2:6-8. Miller further explains that "[t]he
set of parameters [for the reset mode] is stored as a default set which the
pacemaker[] resorts to in case of error in operation." Id. at 6:29-31. Miller
discloses that one event that would cause a pacemaker to switch from
normal mode to reset mode is "corruption to the parameter values for the
normal mode." Id. at 6:50-51. Accordingly, Miller does disclose reverting
to default "reset mode" parameters if programmable "normal mode"
parameters become corrupted, which would encompass the programmable
"normal mode" parameters becoming corrupted during the programming
itself (e.g., during programming by telemetry after implantation). See
Miller, 6:18-21. In light of Miller's disclosure, we are not persuaded by
Appellants' argument that Miller is insufficient documentary evidence to
support the Examiner's finding that it is known in the pacemaker art to
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revert to a default parameter if transmitted parameters (e.g., normal mode
parameters transmitted via telemetry after implantation) are not proper (e.g.,
become corrupted).
Appellants further argue, in essence, that the Examiner's reasoning for
modifying Snell lacks rational underpinnings. Appeal Br. 9. More
particularly, Appellants argue that the Examiner's reasoning is premised on
the incorrect assertion that there would be only two options in the case of a
transmission error-i.e., operating the implantable medical device using a
set of default parameters or shutting down operation of the device. Id.
Appellants reason that Miller itself suggests a different option than these two
options, namely, sending an error signal to the transmitting device, such that
the Examiner's reasoning lacks rational underpinnings. Id.
We are not persuaded by Appellants' argument. Snell itself
recognizes the importance of proper programming of the implanted medical
device. See Snell i-f 6 ("Depending upon the parameters being
reprogrammed, the improper reprogramming may result in significant
changes in the operation of the implanted device, perhaps resulting in a loss
of consciousness of the patient."). The Examiner's proposed modification of
Snell's device is merely to use a technique for handling the situation of
corrupted pacemaker parameters that was known in the pacemaker art, as
evidenced by Miller, in order to improve Snell's device. See KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill"). The
Examiner finds that application of the known technique of reverting to
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default parameters in the case of corruption of the pacemaker parameters
would have yielded predictable results and resulted in an improved system in
which "the patient continues to receive ... appropriate therapy." Final Act.
6. The Examiner's reasoning is based on rational underpinnings, and we are
not persuaded that it relies on an incorrect premise regarding a limited
number of options in the case of a transmission error.
For the foregoing reasons, we are not persuaded that the Examiner
erred in concluding that Snell, in light of knowledge in the pacemaker art as
evidenced by Miller, renders obvious the subject matter of claim 1, and we
sustain the rejection of claim 1under35 U.S.C. § 103(a) as unpatentable
over Snell. We also sustain the rejection of claims 2-10, 12-16, and 18,
which depend from independent claim 1 and for which Appellants rely on
the same arguments and reasoning we found unpersuasive in connection
with independent claim 1. See Appeal Br. 10.
Claim 11
Appellants present separate arguments for the patentability of
dependent claim 11. Dependent claim 11 recites that "to automatically
modify the operating parameters, the processor is configured to restore a
previous operating parameter setting." Appeal Br. 13 (Claims App.).
Appellants argue that "Miller fails entirely to describe restoring a previous
operating parameter setting in the case of error in operation. . . . Rather,
the set of parameters delivered in the case of an error in operation are default
parameters." Id. at 11.
We agree with Appellants that Miller does not constitute adequate
documentary evidence to support the Examiner's assertion that it is common
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knowledge in the pacemaker art to restore a previous operating parameter
setting if the transmitted parameters are not proper. Rather, Miller merely
supports that it is known in the pacemaker art to "resort" to default
parameter settings (i.e., "effectively replace[]" "normal mode" parameters
with "reset mode" parameters), but makes no disclosure regarding
restoration of previous parameter settings. Miller, 2:7-8, 6:29-31. As such,
the Examiner's conclusion of obviousness of the subject matter of dependent
claim 11 is based on an erroneous finding as to the scope of common
knowledge in the pacemaker art that is supported by documentary evidence.
For the foregoing reasons, we are persuaded that the Examiner erred
in concluding that Snell, in light of knowledge in the pacemaker art as
evidenced by Miller, renders obvious the subject matter of claim 11, and we
do not sustain the rejection of claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Snell.
DECISION
The Examiner's decision to reject claims 1-10, 12-16, and 18 is
affirmed.
The Examiner's decision to reject claim 11 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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