Ex Parte Sullivan

Patent Trial and Appeal Board

Jul 20, 2016

13225181 (P.T.A.B. Jul. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/225,181 09/02/2011
96139 7590 07/22/2016
MARGER JOHNSON
-PHYSIO -CONTROL, INC.
888 SW 5th A venue, Suite 1050
PORTLAND, OR 97204
FIRST NAMED INVENTOR
Joseph L. Sullivan
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.
7257-0134_pB0009876.USV04 1002
EXAMINER
MALAMUD, DEBORAH LESLIE
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
07/22/2016 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):
docketing@techlaw.com
physio_control_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH L. SULLIVAN
Appeal2014-007884
Application 13/225, 181
Technology Center 3700
Before CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and
GORDON D. KINDER, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
Joseph L. Sullivan (Appellant)1 appeals under 35 U.S.C. § 134 from
the Examiner's final decision rejecting claims 1 and 2 as unpatentable over
Sullivan (US 2001/0027330 Al, pub. Oct. 4, 2001) and Mower (US
6,141,586, iss. Oct. 31, 2000). Final Act. 6-7. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the real party in interest is Physio-Control, Inc.
Br. 3.
Appeal2014-007884
Application 13/225, 181
THE CLAIMED SUBJECT MATTER
Claims 1 and 2 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter on appeal.
1. A transcutaneous cardiac pacing method comprising:
applying pacing electrodes to a patient for transcutaneous
pacmg;
applying through the electrodes a series of cardiac pacing
pulses; and
applying through the electrodes a series of compensating
pulses interleaved with the cardiac pacing pulses, the
compensating pulses having a polarity opposite to a polarity of
the cardiac pacing pulses to at least substantially compensate for
a charge of the cardiac pacing pulses and configured to:
start approximately immediately at an end of a first
cardiac pacing pulse and last up to an onset of a second
cardiac pacing pulse that succeeds the first cardiac pacing
pulse,
the pacing pulses and compensating pulses being
configured so that a net current applied to a patient is
substantially or exactly zero.
OPINION
The Examiner finds that Sullivan teaches all of the limitations of
independent claims 1 and 2 "except for compensating pulses that start
approximately immediately at an end of a first cardiac pacing pulse and last
up to an onset of a second cardiac pacing pulse that succeeds the first cardiac
pacing pulse." Final Act. 6. More particularly, the Examiner finds, inter
alia, that the first phase of Sullivan's biphasic pulse corresponds to the
claimed "cardiac pacing pulses" and that the second phase of Sullivan's
biphasic pulse corresponds to the claimed "compensating pulses." Ans. 4.
The Examiner reasons that "Appellant has not provided evidence that these
pulses are not equivalent" and that "[b]oth of the phases of Sullivan's pulses
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Application 13/225, 181
are indeed pulses, and the fact that they make up a single bi-phasic pulse
does not differentiate them from individual pulses as in the claimed
invention." Id. The Examiner additionally finds, inter alia, that "the pulses
are configured in such a way that the net current applied to the patient is
substantially zero." Final Act. 6. The Examiner reasons that the figures in
Sullivan depict that "the areas under the first phase ... appear to be similar
or equal to the areas under the second phase" such that "the Examiner
considers the net charge applied to the patient to be at least 'substantially', if
not exactly equal to zero." Ans. 5---6 (citing Sullivan, Fig. 13).
As to the limitation acknowledged to be missing in Sullivan, the
Examiner turns to Mower and finds that Mower teaches "a series of cardiac
pacing pulses (A, 102-104/202-204) and compensating pulses ('relaxation
phase' B, 104--106/204--206) in a series of pulses that immediately succeed
one another in Figures 1 and 2." Final Act. 6-7. The Examiner concludes
that it would have been obvious "to modify Sullivan's transcutaneous pacing
with Mower's continuous train of pacing and compensating pulses in order
to provide pacing that produces less stress on the heart by minimizing the
energy of the heart used for contraction, for greater patient safety and
comfort." Id. at 7.
Appellant argues that "the cited portions of Mower do not depict or
describe separate types of pulses, let alone cardiac pacing pulses and
compensating pulses; rather, the cited portions merely illustrate variations in
the pacing rates [of ventricular pacing] over time." Br. 8.
We agree with Appellant that the Examiner's findings with respect to
Mower are not supported by the reference. Reference elements A and B of
Figures 1 and 2 do not depict a series of pulses that immediately succeed one
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Appeal2014-007884
Application 13/225, 181
another as asserted by the Examiner. Rather, reference element A represents
a "maximum pacing rate," reference element B represents an "[i]ntrinsic
atrial firing rate," and reference element C represents a "minimum pacing
rate" that are part of a "protocol for ventricular pacing" in which the
ventricular firing rate is a few beats per minute greater than the intrinsic
atrial firing rate and then slowly decreased to a rate that is a few beats per
minute below the intrinsic atrial firing rate. Mower, 5:52-59; see also id. at
4:36-59 (describing the benefits of such a ventricular pacing protocol). The
pacing rate and atrial firing rate are all measured in beats per minute, not
current or voltage as would be expected for pulses. See id. at 4:36-45.
Although the protocol for ventricular pacing "can be used in conjunction
with biphasic pacing" (id. at 4:60-61), there is no indication as to whether
the disclosed biphasic pulses of Mower (illustrated in Figures 3-7) are
immediately succeeded by one another, or more particularly, whether
compensating pulses "start approximately immediately at an end of a first
cardiac pacing pulse and last up to an onset of a second cardiac pacing pulse
that succeeds the first cardiac pacing pulse" as required by the claims. The
Examiner's conclusion of obviousness is thus based on an erroneous finding
as to the scope and content of Mower.
For the foregoing reasons, we are persuaded that the Examiner erred
in concluding that the combination of Sullivan and Mower renders obvious
the subject matter of independent claims 1 and 2. Accordingly, we do not
sustain the rejection of claims 1 and 2 under 35 U.S.C. § 103(a) as
unpatentable over Sullivan and Mower.
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Application 13/225, 181
DECISION
The Examiner's decision to reject claims 1 and 2 under 35 U.S.C.
§ 103(a) is reversed.
REVERSED
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