11610234 (P.T.A.B. Sep. 25, 2013)

Ex Parte Ternes et al

Patent Trial and Appeal BoardSep 25, 2013

11610234 (P.T.A.B. Sep. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte DAVID TERNES, ANDREW P. KRAMER, IMAD LIBBUS, and JEFFREY E. STAHMANN ________________ Appeal 2011-009041 Application 11/610,234 Technology Center 3700 ________________ Before ANTON W. FETTING, MEREDITH C. PETRAVICK, and JAMES A. TARTAL, Administrative Patent Judges. TARTAL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009041 Application 11/610,234 2 STATEMENT OF THE CASE1 Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-19. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE. Appellants’ claimed invention relates to medical devices and, more particularly, to systems, devices, and methods for providing neural stimulation therapy. Spec. 1, ll. 4-5. Claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. A system, comprising: circuitry adapted to determine when an arrhythmia has terminated; and a neural stimulator adapted to respond to termination of the arrhythmia by initiating a programmed neural stimulation therapy, wherein the programmed neural stimulation therapy has a programmed duration and is programmed to deliver a plurality of neural stimulation pulses, and wherein the programmed neural stimulation therapy is a programmed response to the termination of the arrhythmia to assist with recovering from the arrhythmia. The Examiner relies upon the following evidence: Hill US US2003/0004549 A1 Jan. 2, 2003 Claims 1-19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hill. 1 Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,” filed Feb. 15, 2011) and Reply Brief (“Reply Br.,” filed May 16, 2011), and the Examiner’s Answer (“Ans.,” mailed Mar. 16, 2011). Appeal 2011-009041 Application 11/610,234 3 FINDINGS OF FACT We find that the findings of fact which appear in the Analysis below are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). ANALYSIS Obviousness based on Hill Claims 1-19 Independent claim 1 is directed to a system comprising circuitry “adapted to determine when an arrhythmia has terminated,” and a neural stimulator “adapted to respond to termination of the arrhythmia.” Independent claim 13 is directed to a method that requires similar steps with respect to termination of an arrhythmia. The Examiner concedes that Hill does not disclose circuitry adapted to determine when an arrhythmia has terminated, but reasons that Hill discloses circuitry that utilizes sensors used to detect arrhythmias and to control therapy. See Ans. 4. The Examiner further notes that Hill discloses continuing therapy after an arrhythmia has terminated. Id. The Examiner then reasons that: it would have been obvious to one of ordinary skill in the art at the time of the appellant’s inventions to combine the embodiments described by Hill in a single embodiment that automatically determines when an arrhythmia and its symptoms have been terminated and then delivers neural stimulation in response to this termination in order to further protect the cardiac tissue (motivation found in par. 0093 of Hill). Id. Appeal 2011-009041 Application 11/610,234 4 Hill (para, [0093]) states: FIG. 5F illustrates the delivery of the therapy for protection during a suspected heart attack. To promote optimal recovery, stimulation may be applied by healthcare professionals as soon as possible in an appropriate form if a heart attack is even suspected (blocks 560 and 562). This is done using transcutaneously-inserted subcutaneous electrode systems discussed above. This stimulation may continue after the symptoms subside to further protect the cardiac tissue (564). The cited portion of Hill does not support the Examiner’s reasoning that it would be obvious to initiate neural stimulation after an arrhythmia has terminated, as claimed. To the contrary, Hill directs that therapy begins “as soon as possible.” The Examiner has not shown where Hill expressly discloses anything about determining when an arrhythmia has terminated, much less anything about protecting cardiac tissue by waiting until such termination to begin stimulation. The Examiner also contends that due to its pulse form, any step in the delivery of stimulation may be deemed “initiating” stimulation, even if it is part of a continued program, such that therapy first initiated prior to termination of an arrhythmia is, in effect, “initiated,” again, after termination of the arrhythmia. See Ans. 6. The Examiner’s reasoning is strained, but more importantly it fails to address the claim language which further requires “a neural stimulator adapted to respond to termination of the arrhythmia.” Showing that initiation could coincide with termination of the arrhythmia is not the same as showing such initiation is in response to termination, as claimed. Accordingly, we cannot sustain the Examiner’s rejection of independent claims 1 and 13, or their dependent claims 2-12 and 14-19, because the Examiner has failed to Appeal 2011-009041 Application 11/610,234 5 articulate reasoning with some rational underpinning to support the legal conclusion of obviousness. DECISION We REVERSE the decision of the Examiner to reject claims 1-19. REVERSED Klh