MARSHALL, Mark T. et al.

Patent Trials and Appeals Board

Feb 25, 2020

14695167 - (D) (P.T.A.B. Feb. 25, 2020)

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.
14/695,167 04/24/2015 Mark T. MARSHALL C0007272.USU2/
LG10126.L33
1939
27581 7590 02/25/2020
Medtronic, Inc. (CVG)
8200 Coral Sea Street NE.
MS: MVC22
MINNEAPOLIS, MN 55112
EXAMINER
LEVICKY, WILLIAM J
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
02/25/2020 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):
rs.patents.five@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK T. MARSHALL, AMY E. THOMPSON-NAUMAN,
MELISSA G.T. CHRISTIE, GONZALO MARTINEZ, and
KEVIN R. SEIFERT
Appeal 2019-002164
Application 14/695,167
Technology Center 3700
BEFORE CHARLES N. GREENHUT, JEREMY M. PLENZLER, and
LEE L. STEPINA, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5, 22, 25, 30, and 31. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Medtronic, Inc.
Appeal Br. 3.
Appeal 2019-002164
Application 14/695,167

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CLAIMED SUBJECT MATTER
The claims are directed to an implantable medical electrical lead.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. An implantable medical electrical lead comprising:
an elongate lead body having a proximal end and a distal
portion, the elongate lead body comprising an insulated portion;
a defibrillation electrode positioned along the distal
portion of the lead body, the defibrillation electrode including a
first defibrillation electrode segment and a second defibrillation
electrode segment spaced a distance apart from each other, the
second defibrillation electrode segment positioned distal to the
first defibrillation electrode segment, the insulated portion of the
elongate lead body positioned between the first and second
defibrillation electrode segments and within the distance, at least
one of the first and second defibrillation electrode segments
including at least one coated portion and at least one uncoated
portion, the at least one coated portion being coated with an
electrically insulating material configured to prevent
transmission of a pacing pulse to a patient's heart and configured
to allow transmission of a defibrillation shock to the heart, the at
least one uncoated portion being configured to transmit a
defibrillation shock and at least one of transmit a pacing pulse to
the heart and sense a cardiac depolarization;
an electrical conductor disposed within the elongate lead
body, each of the first and second defibrillation electrode
segments being electrically coupled to the electrical conductor;
and
one or more pace/sense electrodes along the distal portion
of the lead body and configured to, at least one of, deliver pacing
pulses to and sense electrical activity from the heart, wherein at
least one of the pace/sense electrodes is disposed between the
first defibrillation electrode segment and the second
defibrillation electrode segment.
Appeal 2019-002164
Application 14/695,167

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kroll US 6,327,498 B1 Dec. 4, 2001
Helland US 6,760,619 B1 July 6, 2004
Laske US 2010/0305675 A1 Dec. 2, 2010
REJECTION
Claims 1–5, 22, 25, 30, and 31 are rejected under 35 U.S.C. § 103 as
being unpatentable over Helland, Laske, and Kroll.
OPINION
Appellant disputes the Examiner’s rationale for combining the
teachings of Kroll with those of Helland to provide each of the first and
second defibrillation electrode segments being electrically coupled to the
same electrical conductor as required by claims 1 and 25. Appeal Br. 9–18,
21.
The Examiner finds that Helland teaches “a defibrillation electrode
. . . (e.g.[,] Figure 1, Element 138 and Figure 4, Element 232) . . . including a
first defibrillation electrode segment and a second defibrillation electrode
segment spaced a distance apart from each other (e.g.[,] Figure 1, Element
132 and Figure 4, Element 228).” Final Act. 5. The Examiner
acknowledges, however, that those electrode segments are not electrically
coupled by the same electrical conductor. Id. at 6. To remedy this
deficiency, the Examiner finds that Kroll teaches “first and second
defibrillation electrode segments being electrically coupled to the [same]
electrical conductor.” Id. at 7. The Examiner reasons that “[i]t would have
been obvious . . . to modify the system as taught by Helland . . . with each of
Appeal 2019-002164
Application 14/695,167

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the plurality of first and second defibrillation electrode segments being
electrically coupled to the [same] electrical conductor” because “such a
modification would provide the predictable results of simplified delivery of
shock energy with spaced apart electrodes, by requiring fewer conductors.”
Id. at 8.
Appellant responds to the Examiner’s proposed modification to
Helland’s teachings, explaining that “Helland explicitly teaches as being
advantageous a cardiac stimulation device capable of delivering
defibrillation pulses using any combination of defibrillation electrodes
which are placed in all four chambers of the heart,” which means that “each
defibrillation coil electrode of Helland must, as taught by Helland, be in a
different chamber of the heart and coupled to a separate electrical
conductor.” Appeal Br. 11. Appellant acknowledges that “Kroll does
disclose[] two shocking coil electrodes serially connected to a single
conductor,” but notes that “the coil electrodes of Kroll are implanted within
a single heart chamber.” Id. Appellant contends that
a person having ordinary skill in the art would not have
considered it obvious to modify the leads of Helland to connect
defibrillation coil electrodes 132 and 138 with the single
conductor based on the teachings of Kroll because such a
modification would eliminate an ability to deliver defibrillation
pulses between any combination of electrodes including,
selectively, either of defibrillation coil electrodes 132 and 138.
Id. Appellant further contends that “[m]odifying the leads of Helland by
connecting the coil electrodes of Helland with the single conductor of Kroll
would render the leads of Helland incapable of their disclosed intended
purpose of delivering defibrillation pulses ‘between any combination of the
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defibrillation electrodes.’” Id. at 15–16 (citing Helland, Abstract).
Appellant has the better position.
The Examiner does not dispute that Helland’s system employs
separate electrical conductors for each defibrillation coil electrode. See Ans.
3–8. Rather, the Examiner explains that “Helland teaches delivering
between any combination of electrodes, which includes delivering
defibrillation pulses to electrodes 132 and 138.” Ans. 3 (citing Helland
2:16–20). Simply stated, the Examiner finds that Helland teaches an
arrangement where it would not matter if Helland’s defibrillation electrodes
had a common electrical conductor or separate electrical conductors because
both defibrillation electrodes are being simultaneously activated. This forms
the basis for the Examiner’s rationale that use of a single electrical
conductor for the simultaneous activation would be obvious as a
simplification. This explanation by the Examiner does not adequately
address the point Appellant attempts to make.
The goal of Helland is to provide a system that allows for individual
activation of electrodes associated with each of the four heart chambers
while minimizing the number of electrodes and leads. See Helland 1:37–
2:47. We agree that the Examiner’s proposed modification defeats this
purpose. The Examiner has failed to establish sufficiently that when looking
to the teachings of Helland and Kroll, one skilled in the art would have
simplified Helland’s system in the manner proposed because such a
modification is counter to the objective of Helland.
For at least these reasons, we do not sustain the Examiner’s decision
to reject claims 1 and 25, or claims 2–5, 22, 30, and 31, which depend from
claim 1.
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Application 14/695,167

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CONCLUSION
The Examiner’s rejections are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 22, 25,
30, 31
103 Helland, Laske,
Kroll
1–5, 22, 25,
30, 31

REVERSED