Saurav Paul et al.

Patent Trials and Appeals Board

Sep 30, 2019

13102002 - (D) (P.T.A.B. Sep. 30, 2019)

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.
13/102,002 05/05/2011 SAURAV PAUL 0B-0547USP2/065513-00343 6154
67337 7590 09/30/2019
DYKEMA GOSSETT PLLC (STJ)
4000 Wells Fargo Center
90 South Seventh Street
Minneapolis, MN 55402
EXAMINER
HOEKSTRA, JEFFREY GERBEN
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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):
ASJM_Patents@abbott.com
MN-IPMail@dykema.com
Patents@dykema.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAURAV PAUL, PRATHYUSHA MARRI, and
D. CURTIS DENO
Appeal 2018-003677
Application 13/102,002
Technology Center 3700
Before MICHAEL J. FITZPATRICK, RICHARD H. MARSCHALL, and
PAUL J. KORNICZKY, 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, 4–7, 10–15, 17, 20, 21, 23, 26, and
28–31, which constitute all the claims pending in this application. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “Applicants” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as St. Jude
Medical, Atrial Fibrillation Division, Inc. Appeal Br. 4.
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Application 13/102,002

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CLAIMED SUBJECT MATTER
The claims are directed to a system and method for determining tissue
type and mapping tissue morphology. Spec. ¶ 2. Claims 1, 15, and 21 are
independent. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method of determining tissue type comprising the
steps of:
acquiring a value of an electrical parameter between a
first electrode electrically coupled with tissue and a second
electrode, said electrical parameter comprising at least an
impedance magnitude component of a complex impedance
between said first and second electrodes, and said electrical
parameter corresponds to a position of the first electrode;
identifying a tissue type from a plurality of tissue types
based on said electrical parameter;
determining a location of the tissue based on said
position of said first electrode;
generating a marker representative of the identified tissue
type; and
superimposing said marker onto a portion of an image or
model of the tissue corresponding to said location.
Appeal Br. 17 (Claims App.).
REJECTIONS
Claims 1, 5, 6, 10–13, 15, 17, 20, 21, 23, 26, and 31 are rejected under
35 U.S.C. § 102(b) as anticipated by Cory.2 Final Act. 3.
Claims 4 and 14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cory. Final Act. 12.

2 US 2006/0085049 A1, published April 20, 2006 (“Cory”).
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Claims 7 and 29 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cory and Pearson.3 Final Act. 13.
OPINION
The Examiner finds that Cory discloses all of the limitations of
independent claims 1, 15, and 21. See Final Act. 3–4, 7–12. The
Examiner’s findings rely on and cite to specific disclosures in Cory as
corresponding to specific claim limitations. See id. In the “Response to
Amendment” section of the Final Rejection, the Examiner finds that
“Applicant’s amendments and arguments/remarks have been fully
considered but are moot in view of the current rejections presented above.”
Id. at 14. The Examiner further “contends that the Cory reference teaches all
claim limitations, at least as broadly as currently recited based on the
applicant’s amendments.” Id.
Appellant first argues, with respect to claims 15 and 21, that “it is not
at all clear how Cory could meet the various claim limitations as the
Examiner at p. 7 of the non-final Office action [(dated August 17, 2016)
(“2016 office action”)] admits that ‘Cory does not explicitly disclose
acquiring/determining an electrical coupling index indicative of a degree of
coupling between the electrode and the tissue.’” Appeal Br. 10–11. Based
on this alleged admission in the 2016 office action, Appellant asserts that the
current anticipation rejection of claims 15 and 21 “is rendered entirely
improper.” Id. at 11. Appellant next argues that the rejection of all of the
independent claims “fail[s] to provide any explanation whatsoever that
would assist the Appellant’s understanding of the basis for the rejection

3 US 2003/0130711 A1, published July 10, 2003 (“Pearson”).
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because the rejection “generically” cites to paragraphs 107–398 of Cory,
which includes over 30 pages of text. Id. at 11–12. Appellant also argues
that its previous traversals, prior to the 2016 office action, against a
combination of Cory with another reference not relied upon in the Final
Office Action, were not mooted by the Examiner’s rejections in the 2016
office action. Id. at 12–13. In a related argument, Appellant asserts that its
previous arguments as to Cory have not been addressed by the Examiner in
the Final Office Action. Id. at 13–14. Appellant contends that the
Examiner’s failure to respond to Appellant’s previous arguments renders the
action “arbitrary and capricious.” Id. at 14. Appellant also contends that its
amendments to the claims do not justify a new ground of rejection, because
the Examiner addressed the substance of the current claims in the previous
rejection of claim 21. Id. at 14–15.
In the Answer, the Examiner finds that “the change in the basis of the
rejection was the result of the applicant’s amendments and
arguments/remarks filed on 1 /13/2017.” Ans. 15. The Examiner also finds
that the “amendments to remove and add limitations to the claims altered the
scopes of the claims and were subject to further review and reconsideration,
upon which the examiner changes the basis of the rejection in view of the
prior art of record.” Id. The Examiner also notes that none of Appellant’s
arguments in the Appeal Brief amounts to an argument that Cory does not
disclose any of the limitations of the rejected claims. Id. The Examiner
provides further guidance regarding the basis of the rejection “[f]or the sake
of completeness,” and finds that
Cory discloses in paragraphs [0196]–[0200] that the electrodes
may include an indicator that indicates when sufficient electrical
contact is made between the electrodes and skin to indicate
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sufficient coupling, thus meeting the broadest reasonable
interpretation of an electrical coupling index (either coupled or
not sufficiently coupled), and therefore the measured electrical
parameter of the complex impedance and coefficient includes an
electrical coupling index which indicating it was sufficiently
coupled.
Id. As to the citation of 30 pages of text in the rejection, the Examiner finds
that this mischaracterizes the rejection, which includes citations to more
specific citations, some of which are bolded to show that they are
“specifically pertinent to that claim limitation.” Id. at 16–17 (noting the
bolded citation to Cory ¶¶ 376–384). As to the alleged failure to address
Appellant’s previous arguments traversing the non-final rejection, the
Examiner finds that “the examiner did not provide a more detailed response
to the traversal because the rejection with Cory provided [a] clear and
updated rejection which addressed the applicant’s amendments to the claims
and thus the new grounds of rejection were sufficient to answer the
traversal.” Id. at 18. The Examiner also notes that the amendments in
question did not merely incorporate limitations from claim 21. Id. at 18–19.
Appellant has not apprised us of error in any of the Examiner’s
rejections. Importantly, the Examiner correctly notes that Appellant does
not support its argument that the independent claims are not anticipated with
any substantive arguments that address Cory’s disclosure. Instead, the
Appeal Brief sets forth a number of largely procedural arguments based
primarily on prior prosecution of the application. See Appeal Br. 10–16.
To the extent Appellant’s arguments are appealable,4 we find them
unconvincing. First, as to the argument based on the Examiner’s alleged

4 These issues with the prior examination of the application, and the failure
of the Examiner to address Appellant’s previous arguments in the Final
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“admission” at a prior point in the prosecution, Appellant does not argue that
the Examiner’s current findings that Cory discloses the limitations are in
error, or explain the lack of support for the findings on appeal. See Appeal
Br. 10–11. By not referring to the substance of the Examiner’s current
findings related to the limitation in question, Appellant suggests that
examiners are forever bound by interpretations of prior art in earlier office
actions, and cannot revisit and alter the interpretation and application of the
prior art to the claims. Appellant does not cite any legal authority to support
such a position, and we decline to adopt it. See id.
Second, allusions to arguments made in prior prosecution are
insufficient to inform us of the substance of Appellant’s challenges to the
specific findings that are part of the Final Office Action on appeal. An
Appeal Brief must contain the arguments in support of Appellant’s
contention that the Examiner erred in the rejection on appeal, not previous
rejections. See 37 C.F.R. § 41.37(c)(1)(iv) (“The arguments shall explain
why the examiner erred as to each ground of rejection contested by
appellant.”). Arguments “not included in the appeal brief will be refused
consideration by the Board for purposes of the present appeal.” Id. We are
not bound to search the record in support of previous arguments made by
Appellant prior to the Appeal Brief in an attempt to ferret out arguments that
may still apply to the pending claims and rejections on appeal. The
obligation to include pertinent substantive arguments in the appeal brief

Office Action, may be petitionable, rather than appealable. For example,
MPEP § 1001.02(c) lists petitionable matters such as the “prematureness of
final rejection” and “requirements made by the examiners.” MPEP
§ 1001.02(c); see also 37 C.F.R. § 1.182 (allowing petitions to address
situations “not specifically provided for”).
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certainly applies in the situation here, where the claims have been amended
during prosecution since the last substantive arguments by Appellant, and
the statutory basis and specific citations in support of the rejections have
changed since the 2016 office action in question. If Appellant still maintains
that Cory fails to disclose one or more limitations of the rejected claims, it
was incumbent upon Appellant to raise those substantive arguments in its
Appeal Brief and address the current citations to Cory that the Examiner
relies upon, not the Examiner’s prior rejections that are not on appeal.
Third, Appellant’s complaints regarding the failure of the Examiner to
specify the basis for the rejection lack merit. Appeal Br. 11–12. In response
to Appellant’s argument that the Examiner’s citations were insufficient
because they included a lengthy cite, the Examiner provided an extensive
explanation with further guidance that remains unrebutted on appeal. The
Examiner noted the reason for including the citation to extensive text (as
pertinent background), noted the other, more specific cites to Cory that
Appellant ignores in its Appeal Brief, and identified specific paragraphs
within Cory as particularly pertinent. Ans. 15–17 (highlighting Cory
¶¶ 196–200, 376–384 as particularly relevant to the substance of the
rejections). Appellant had the opportunity to address the Examiner’s further
explanation and more specific citations with a Reply Brief, but declined to
do so. Further, we do not view the Examiner’s citations as so lacking in
detail that Appellant was not sufficiently apprised of the basis for the
rejections.
Fourth, as to Appellant’s argument that the Examiner should have
addressed Appellant’s previous arguments addressing the Examiner’s
findings prior to the Final Office Action, the Examiner provides unrebutted
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and supported argument that both the scope of the pending claims and the
bases for the rejections changed in the Final Office Action. See Ans. 18–19.
The Examiner’s explanation that a more detailed response to the traversal
was unnecessary because the new anticipation rejection based on Cory
“addressed the applicant’s amendments” and was “sufficient to answer the
traversal” stands unrebutted. Id. at 18. By declining to address the specifics
of the Examiner’s citations to Cory, we are left with no basis to conclude
that the Examiner erred in this assertion.
Further, our own review of the record tends to support the Examiner’s
position, as the rejection at issue in the 2016 office action was an
obviousness rejection based on Cory and another reference not relied on in
the rejection on appeal, not an anticipation rejection based on Cory. See
Non-Final Action at 5 (dated Aug. 17, 2016). In addition, the Examiner’s
citations to Cory are more expansive in the Final Office Action (and the
Answer), than in the previous, 2016 office action. Compare id. at 5–6, with
Final Act. 3–4; see also Ans. 15–17. These differences support the
Examiner’s position that the updated and more extensive cites and the new
rejection may address Appellant’s previous arguments. In any event, as we
note above, even if Appellant correctly argues that some of the Examiner’s
findings from previous rejections include alleged errors that carry through to
the current rejections, Appellant should have pointed out those errors with
specificity, supported by evidence and argument, in its Appeal Brief.
Appellant did not do that.
Based on the foregoing, we sustain the rejection of the independent
claims. Appellant relies on the same arguments with respect to the
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dependent claims on appeal, and we therefore sustain the rejections of the
dependent claims for the same reason. Appeal Br. 16.
DECISION
We affirm the Examiner’s rejections of claims 1, 4–7, 10–15, 17, 20,
21, 23, 26, and 28–31.
DECISION SUMMARY
Claims
Rejected
Basis Affirmed Reversed
1, 5, 6, 10–13, 15, 17,
20, 21, 23, 26, and 31
§ 102 Cory 1, 5, 6, 10–13,
15, 17, 20, 21,
23, 26, and 31

4 and 14 § 103 Cory 4 and 14
7 and 29 § 103 Cory,
Pearson
7 and 29
Overall Outcome 1, 4–7, 10–15,
17, 20, 21, 23,
26, and 28–31

FINALITY AND 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