Medtronic, Inc.

Patent Trials and Appeals Board

Jun 15, 2021

2020004718 (P.T.A.B. Jun. 15, 2021)

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.
15/592,343 05/11/2017 Paul A. IAIZZO C00005692.USV6 3374
27581 7590 06/15/2021
Medtronic, Inc. (CVG)
8200 Coral Sea Street NE.
MS: MVC22
MINNEAPOLIS, MN 55112
EXAMINER
BOWERS, NATHAN ANDREW
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
06/15/2021 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.one@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL A. IAIZZO, TIMOTHY G. LASKE,
MICHAEL D. EGGEN, RYAN P. GOFF, and
BRIAN HOWARD
Appeal 2020-004718
Application 15/592,343
Technology Center 1700
Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and
SHELDON M. MCGEE, Administrative Patent Judges.

MCGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–10. We have jurisdiction.
35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Medtronic,
Inc. Appeal Br. 3.
Appeal 2020-004718
Application 15/592,343

2
CLAIMED SUBJECT MATTER
The subject matter on appeal concerns an isolated large mammalian
heart and lung preparation in which essentially normal pumping activity of
all four chambers of the heart is preserved. Spec. 2:2–4. The Specification
describes the preparation’s use in testing medical devices, which are used in
or on a beating heart or functioning lung. Id. at 2:4–7.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of use of an isolated heart-lung preparation
comprising:
obtaining an excised heart with one or two lung(s)
including corresponding coronary arteries and veins;
delivering a transparent perfusate through several and/or
all four chambers of the heart via a cannulated attached aorta,
inferior vena cava, pulmonary artery and pulmonary vein;
wherein the perfusate flows through the coronary arteries and
veins of the heart and oxygenates the heart with trachea being
intubated and
employing a ventilator to inflate/deflate the lung with
carbogen or other gaseous mixtures.

Appeal Br. 13 (Claims App.).
OPINION
The Examiner rejects claims 1–10 under 35 U.S.C. § 103 as
unpatentable over the combined disclosures of Laske2 and Schill.3 Final
Act. 3–4.

2 US 7,045,279 B1, issued May 16, 2006.
3 US 5,807,737, issued September 15, 1998.
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Application 15/592,343

3
We affirm the obviousness rejection for the reasons well-expressed by
the Examiner in the Final Action and the Answer. We add the following
comments for emphasis.
Appellant’s arguments are directed solely to the subject matter of
claim 1. Appeal Br. 5–11; Reply Br. 2–5. Appellant unpersuasively argues
limitations not recited in the claim. See Appeal Br. 7 (arguing that the
Examiner “provides no support for the argument that perfusate could be
oxygenated in the lung”); see also id. at 8 (again arguing that Schill’s
“teaching of oxygenating blood using the lungs does not constitute” teaching
an unclaimed step of “oxygenating clear perfusate using the lungs). Such
“arguments fail from the outset because . . . they are not based on limitations
appearing in the claims.” In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Appellant also presents arguments that fail to reveal error in the
Examiner’s obviousness determination because they do not address the
rationale as set forth in the rejection. Appeal Br. 6–9. As the Examiner
explains (Ans. 3), and Appellant does not dispute, “there is nothing in the
rejection[] of record that suggest[s] replacing (i.e. removing) the Laske
oxygenator” with Schill’s lung-oxygenating ventilator. See also Laske
1:63–68 (disclosing that “[t]he heart is . . . coupled to an external
oxy[]genator and associated pumps, which provide oxygenated perfusate” to
the heart’s coronary arteries and veins.).
We furthermore agree with the Examiner that Schill’s lungs for
oxygenating blood would have been suitable for oxygenating Krebs buffer
solution because both solutions are mostly composed of water. Ans. 5.
Notably, Appellant does not address, and thus does not reveal error in, the
Examiner’s reliance on Sadri for evincing “that it has been known for at
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Application 15/592,343

4
least 26 years that various buffers and blood may each be suitably
oxygenated using the same type of oxygenator.” Id. at 6. Thus, it follows
that the combination of Laske’s heart preparation and oxygenating perfusate
with Schill’s lungs and ventilator unit, each provided with an external
oxygenator, would have resulted in the claimed flow of perfusate to
oxygenate the heart. Id. at 3;
Finally, Appellant avers that “incorporating the heart, lungs, and the
blood in the preparation of Laske would render the Laske preparation
inoperable for its intended purpose.” Appeal Br. 10. Specifically, Appellant
contends that because Laske requires visualizing heart structures and devices
located therein, Schill’s opaque blood would have prevented any such
visualization. Id.; Reply Br. 4. We discern no persuasive merit to this
argument, however, because it focuses on the bodily incorporation of certain
features of one reference into the structure of another. The predecessor to
our reviewing court has determined that is not a proper test to determine
obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” (emphasis added)).
CONCLUSION
The Examiner’s rejection is affirmed.

Appeal 2020-004718
Application 15/592,343

5

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1–10 103 Laske, Schill 1–10
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED