nullDownload PDFPatent Trials and Appeals BoardNov 29, 201915867262 - (D) (P.T.A.B. Nov. 29, 2019) Copy Citation 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. 15/867,262 01/10/2018 James M. Olsen 1023-968US02/ P038660.USV3 1143 71996 7590 11/29/2019 SHUMAKER & SIEFFERT , P.A 1625 RADIO DRIVE , SUITE 100 WOODBURY, MN 55125 EXAMINER SMITH, RUTH S ART UNIT PAPER NUMBER 3793 NOTIFICATION DATE DELIVERY MODE 11/29/2019 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 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 JAMES M. OLSEN and STEVEN M. GOETZ Appeal 2019-003767 Application 15/867,262 Technology Center 3700 Before WILLIAM A. CAPP, JEREMY M. PLENZLER, and RICHARD H. MARSCHALL, Administrative Patent Judges. MARSCHALL, 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 1–20. 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 2019-003767 Application 15/867,262 2 CLAIMED SUBJECT MATTER The invention relates to “implantable medical devices that deliver electrical stimulation therapy.” Spec. ¶ 2. Claims 1, 5, and 11 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: Claim 1: A method comprising: detecting, by a medical device, activation of a first MRI scan of a magnetic resonance imaging (MRI) unit; based on the detection of the activation of the first MRI scan, delivering, with the medical device, electrical stimulation therapy to a patient in the MRI unit or being imaged by the MRI unit, wherein the medical device is configured to deliver the electrical stimulation therapy according to a first stimulation state of a plurality of different stimulation states; subsequently detecting, by the medical device, activation of a second MRI scan of the MRI unit; and based on the detection of the activation of the second MRI scan, changing, by the medical device, from delivering the electrical stimulation therapy according to the first stimulation state to delivering the electrical stimulation therapy according to a second stimulation state of the plurality of different stimulation states. Appeal Br. 22 (Claims App.). REJECTIONS ON APPEAL 1. Claims 1–12 and 15 are rejected under 35 U.S.C. § 102(e) as anticipated by Stahmann.2 2. Claims 13, 14, and 16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Stahmann. 2 U.S. Patent Pub. No. 2011/0160567 A1, published June 30, 2011 (“Stahmann”). Appeal 2019-003767 Application 15/867,262 3 3. Claims 17–20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Stahmann, Leyde,3 and Ghanem.4 OPINION Claim 1 Claim 1 requires “changing . . . from delivering the electrical stimulation therapy according to the first stimulation state to delivering the electrical stimulation therapy according to a second stimulation state” “based on the detection of the activation of the second MRI scan.” Appeal Br. 22 (Claims App.). The Examiner finds that Stahmann discloses “delivering electrical stimulation therapy after detecting activation of an MRI scan and varying the stimulation parameters in between successive imaging operations.” Ans. 7, 8 (citing Stahmann ¶¶ 86, 89, 91, Fig. 3). The Examiner also finds that the “parameters may be varied as each scan is conducted and the images of each scan are used to monitor the response.” Id. at 8. The Examiner concludes that these disclosures meet the claim limitation because “if the parameters are monitored and varied in between successive imaging operations, the therapy would be changed based on activation of successive scans.” Id.; see also Final Act. 3. Appellant does not dispute that Stahmann discloses varying stimulation parameters in between successive MRI scans. Appeal Br. 12; Reply Br. 5. Appellant argues that those parameters are varied based on the results of the prior scan, not “based on the detection of the activation of the 3 U.S. Patent Pub. No. 2009/0171168 A1, published July 2, 2009 (“Leyde”). 4 U.S. Patent Pub. No. 2010/0113889 A1, published May 6, 2010 (“Ghanem”). Appeal 2019-003767 Application 15/867,262 4 second MRI scan” as required by claim 1. Appeal Br. 12; id. at 22 (Claims App.). More specifically, Appellant argues that “Stahmann uses data obtained from the fMRI scan to adjust the one or more cardiac function management or neurostimulation parameters, not the detection of the fMRI scan itself.” Id. at 12. Appellant emphasizes that claim 1 requires changing from delivering according to a first stimulation state to a second stimulation state, and that this ability to “automatically change from one state to stimulation state to another in response to detecting different MRI scans can have various benefits,” such as correlating stimulation states with scans and avoiding the need for manual programming between scans as taught by Stahmann. Reply Br. 2–3. According to Appellant, Stahmann discloses an intermediate stimulation state as it modifies parameters between scans, and therefore at most Stahmann teaches changing from that second, intermediate state—not the first stimulation state—to a new stimulation state when the second MRI scan is detected. See id. at 5. We agree with Appellant that, when the claim is properly construed, Stahmann fails to disclose all of the limitations of claim 1. Appellant does not dispute the Examiner’s characterization of Stahmann as disclosing a method that includes a first stimulation state during a first MRI scan and a second stimulation state during a second MRI scan, with manual alteration of parameters between those two scans. See Reply Br. 3. The issue is whether such an approach falls within the scope of the limitation requiring “changing . . . from delivering the electrical stimulation therapy according to the first stimulation state to delivering the electrical stimulation therapy according to a second stimulation state” “based on the detection of the Appeal 2019-003767 Application 15/867,262 5 activation of the second MRI scan.” Appeal Br. 22 (Claims App.). We conclude that it does not. Appellant emphasizes that the claim requires the system to “automatically change from one state to stimulation state to another in response to detecting different MRI scans.” Reply Br. 2. The claim language, while not definitive, generally supports Appellant’s position by requiring a change from one stimulation state to another “based on the detection of the activation of the second MRI scan.” Appeal Br. 22 (Claims App.) (emphasis added). If the change must be based on detection of a second MRI scan, such a method would generally not cover making changes prior to detection of the second MRI scan based on results from the first MRI, which is the case when the changes are made manually between MRI scans. Moreover, the claim must be read in light of the Specification, and the Specification here makes clear that the change “based on” detection of the second MRI does not encompass manual changes made prior to the detection of the second MRI. For example, the Specification describes the possibility of changing the therapy programming “between scans,” but describes that approach as “[b]urdensome and time consuming.” Spec. ¶ 29. The Specification describes an improved approach, where the “therapy is cycled periodically according to a schedule,” correlating each stimulation state with an MRI scan so that changes can be coordinated and avoiding the need for reprogramming between MRI scans. See id. Because the claim language tracks this allegedly improved approach by changing stimulation states from a first state to a second “based on” detection of the second MRI, we do not read it as broad enough to cover changing parameters between scans, which it disparages. Appeal 2019-003767 Application 15/867,262 6 Based on the foregoing, we adopt Appellant’s characterization of the claim requirements, where “changing . . . from delivering the electrical stimulation therapy according to the first stimulation state to delivering the electrical stimulation therapy according to a second stimulation state” “based on the detection of the activation of the second MRI scan” requires an automatic change directly from the first stimulation state to the second stimulation state when activation of the second MRI scan is detected, without any intervening manual changes to the parameters. With this construction as a backdrop, Stahmann does not anticipate because it discloses a method whereby changes in the parameters are made manually after delivering therapy according to the first stimulation state, but before detection of the activation of a second MRI scan. See Stahmann ¶¶ 86, 89, 91. Accordingly, we do not sustain the rejection of claim 1. Remaining Claims The Examiner relies on similar findings with respect to the anticipation rejections of independent claims 5 and 11, and Appellant relies on the same arguments. See Final Act. 4–5; Appeal Br. 13–14. We do not sustain the rejections of independent claims 5 and 11, or dependent claims 2–4, 6–10, and 12 that are also rejected as anticipated, for the same reasons discussed above. The rejections of dependent claims 13, 14, and 16–20 as obvious rely on the same flawed findings we discussed above, without remedying those deficiencies. See Final Act. 6–8. Accordingly, we do not sustain those rejections for the same reasons discussed above. CONCLUSION We reverse the Examiner’s rejection of claims 1–20. Appeal 2019-003767 Application 15/867,262 7 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–12, 15 102(e) Stahmann 1–12, 15 13, 14, 16 103(a) Stahmann 13, 14, 16 17–20 103(a) Stahmann, Leyde, Ghanem 17–20 Overall Outcome 1–20 REVERSED Copy with citationCopy as parenthetical citation