13074808 (P.T.A.B. Sep. 23, 2016)

Ex Parte Poletto et al

Patent Trial and Appeal BoardSep 23, 2016

13074808 (P.T.A.B. Sep. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/074,808 03/29/2011 71996 7590 09/27/2016 SHUMAKER & SIEFFERT, P.A 1625 RADIO DRIVE, SUITE 100 WOODBURY, MN 55125 FIRST NAMED INVENTOR CHRISTOPHER POLETTO 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. 1123-027US01/P0039189.00 1482 EXAMINER HILL, KEVIN KAI ART UNIT PAPER NUMBER 1633 NOTIFICATION DATE DELIVERY MODE 09/27/2016 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): pairdocketing@ssiplaw.com medtronic _neuro _ 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 POLETTO, JONATHON E. GIFTAKIS, and WILLIAM F. KAEMMERER Appeal2014-006709 Application 13/074,808 Technology Center 1600 Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and ULRIKE W. JENKS, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants have requested rehearing (reconsideration) of the Decision mailed July 7, 2016. That decision affirmed the Examiner's anticipation and obviousness rejections. Appellants' request for designation of the affirmance as a new grounds of rejection is denied. Appeal2014-006709 Application 13/074,808 DISCUSSION Appellants contend that the "Board's introduction of the 'intended use or purpose' rationale in the rejection of claim 27 is not simply a further explanation of the Examiner's ground of rejection, but is instead a different reasoning that was not relied upon by the Examiner to reject independent claim 27" (Req. R'hrg 5). Appellants contend that they have (Id.). not been afforded the opportunity to reply to the Board's ground of rejection of claim 27, which differs in articulated reasoning from the Examiner's rejection of claim 27. Thus, Appellant[ s] respectfully request[] that the Board designate the rejection of at least claim 27 presented in the Decision on Appeal a new ground of rejection. We find this argument that the Decision introduced an undesignated New Ground by relying upon "intended use" to analyze claim 27 unpersuasive because 1A .. ppellants, in their Reply Brief, recognized that the Examiner relied upon an "intended use" rationale, arguing that: The Examiner has not adequately addressed or otherwise accounted for the differences in the sensor disclosed by Zhang and the sensor of Appellant's claim 27. The recitation in claim 27 that the sensor is "configured to sense a bioelectrical signal indicative of a neurological condition of the patient" is not simply a statement of intended use. Rather, the claim language denotes an actual state of configuration of the sensor, which Zhang fails to disclose. (Reply Br. 4; emphasis added). Our analysis was, therefore, responsive to Appellants' arguments in the Reply Brief. Our analysis was also consistent with the Examiner's reasoning in the Final Rejection, where the Examiner stated that "Zhang et al disclose a 2 Appeal2014-006709 Application 13/074,808 sensor configured to sense a bioelectrical signal related to a neurological condition of a patient (pg 4, lines 1-7), e.g. providing feedback that measures the voltage or current across a cell membrane" (Final Act. 5). While we restated the Examiner's argument in different words, using the "intended use" language of the caselaw, we relied upon the same facts as the Examiner and our arguments shared the same thrust that "Appellants do not identify any necessary structural difference between the sensor of Zhang and the claimed sensor, with both sensors detecting bioelectric signals" (Dec. 6- 7). Leithem stated that "[t]he thrust of the Board's rejection changes when ... it finds facts not found by the examiner regarding the differences between the prior art and the claimed invention, and these facts are the principal evidence upon which the Board's rejection was based." In re Leithem, 661F.3d1316, 1320 (Fed. Cir. 2011). Here, Appellants do not identify any facts relied upon in our Decision that differ in substance from those relied upon by the Examiner. Indeed, each of FF 1-3, 5, 7, 9 cited in the Decision are based on portions of Zhang identified by the Examiner in the Answer (cf FF 1-2 and Ans. 3 "pg 3, lines 16-25; pg 4, lines 4--6"; FF3, 5 and Ans. 4 "pg 13, lines 5-8"; FF7, 9 and Ans. 3 "pgs 33-34, joining i-f"). Moreover, "the ultimate criterion of whether a rejection is considered 'new' in a decision by the board is whether appellants have had fair opportunity to react to the thrust of the rejection." In re Kronig, 539 F.2d 1300, 1302 (CCPA 1976). Here, not only did Appellants have opportunity to respond to the "intended use" argument regarding claim 27, they actually did so (see Reply Br. 4 ). 3 Appeal2014-006709 Application 13/074,808 CONCLUSION Appellants Request for Reconsideration in order to designate the Decision affirming the Examiner's rejections as a new grounds of rejection is denied. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). DENIED 4