Ex Parte Armstrong et al

Patent Trial and Appeal Board

Oct 22, 2013

10900573 (P.T.A.B. Oct. 22, 2013)

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.
10/900,573 07/28/2004 Randolph K. Armstrong 1000.060 9746
41332 7590 10/22/2013
CYBERONICS, INC.
LEGAL DEPARTMENT, 6TH FLOOR
100 CYBERONICS BOULEVARD
HOUSTON, TX 77058
EXAMINER
ANTHONY, JESSICA LYNN
ART UNIT PAPER NUMBER
3766
MAIL DATE DELIVERY MODE
10/22/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RANDOLPH K. ARMSTRONG and SCOTT A.
ARMSTRONG
____________________

Appeal 2011-006575
Application 10/900,573
Technology Center 3700
____________________

Before: WILLIAM V. SAINDON, WILLIAM A. CAPP, and
NEIL T. POWELL, Administrative Patent Judges.

POWELL, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
9, 11-14, 24-30, and 32-34. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE CLAIMED SUBJECT MATTER
Independent claim 1, reproduced below, is illustrative of the appealed
subject matter.
1. A method for determining an
impedance associated with a lead assembly in an
implantable medical device, said lead assembly
comprising a first terminal and a second terminal,
said method comprising:
providing a controlled current signal through
said first terminal and said second terminal;
measuring a voltage across said first and
second terminals using said first and second
terminals; and
determining the impedance across said first
and second terminals based upon said controlled
current signal and said voltage, to determine the
impedance associated with the lead assembly; and
determining a change in the impedance
associated with the lead assembly, wherein said
implantable medical device is a vagus nerve
stimulator device.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Yomtov US 4,630,615 Dec. 23, 1986
Pihl US 4,870,341 Sept. 26, 1989
Eikefjord US 5,097,830 Mar. 24, 1992
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Plicchi US 5,501,702 Mar. 26, 1996
Linder US 6,317,628 B1 Nov. 13, 2001
Mouchawar US 6,445,951 B1 Sept. 3, 2002
Weinberg US 2003/0078623 A1 Apr. 24, 2003
Adams US 2003/0229380 A1 Dec. 11, 2003
Shelchuk US 2004/0199210 A1 Oct. 7, 2004
Fukui US 2004/0215289 A1 Oct. 28, 2004

REJECTIONS
Appellants seek our review of the following rejections.
I. Claims 32 and 33 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
II. Claims 1-8 stand rejected under 35 U.S.C. § 101.
III. Claims 1, 2, 4, 24, 25, and 27 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Mouchawar.
IV. Claims 3, 9, 12, 26, and 34 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Mouchawar, Pihl, and Yomtov.
V. Claims 5, 6, 28, and 29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mouchawar and Linder.
VI. Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mouchawar, Pihl, Yomtov, and Linder.
VII. Claims 7, 8, and 30 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mouchawar, Linder, and Plicchi.
VIII. Claim 11 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Mouchawar, Pihl, Yomtov, Linder, and Plicchi.
IX. Claims 32 and 33 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mouchawar, Linder, and Eikefjord.

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ANALYSIS
Rejection I
The Examiner finds that the claim 32 limitation “performing a
calibration of a value measured using said pair of terminals based upon said
change in said impedance associated with the lead assembly” does not
comply with the written description requirement. See Ans. 4-5. Appellants
argue that the Examiner erred because the Specification conveys that
calibration can occur after implantation, in addition to before. App. Br. 8-9
(citing Spec., p. 44, ll. 12-14, p. 44, l. 24-p. 45, l. 3). In response, the
Examiner indicates that the written description deficiency relates to the
claim’s recitation of how the calibration is done, specifically that the
calibration is done based on a change in impedance, not when the calibration
is done. Ans. 16-17. Thus, even if accurate, Appellants’ assertion that the
Specification provides written description for calibration after implantation
does not apprise us of error in the Examiner’s finding that the Specification
does not provide written description for calibration based on a change in
impedance, as required by claim 32. Accordingly, we sustain rejection I.

Rejection II
The Examiner determines that claims 1-8 fall within judicial
exceptions to patent eligible subject matter because the claims cover mental
application of an abstract idea not limited to a specific practical application.
Ans. 5, 17. In connection with this, the Examiner notes that the claimed
process of determining impedance involves only data gathering with no
more than nominal, insignificant, or tangentially related involvement of a
machine or transformation. Id. at 17. The Examiner elaborates that the
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“lead assembly” recited in the claims merely constitutes an object on which
the method operates, and that the only transformation in the claims involves
mathematical concepts and/or mental steps. Id.
Appellants contend that the claims do not fall within a judicial
exception because they do not “cover impedance as a law of nature, a natural
phenomenon, or an abstract idea” but “cover a process comprising
determining an impedance.” App. Br. 9. Appellants elaborate that “the
claims . . . do not attempt to cover any formula in the abstract or every
substantial practical application of any abstract idea.” Id. at 10. These
arguments do not apprise us of error in the rejection. Appellants’ conclusory
arguments do not serve to convince us that determining impedance does not
constitute an abstract idea. As to whether the claims cover every substantial
practical application of this abstract idea, Appellants do not point to any
specific aspect of the claims that meaningfully limits them from covering
every practical way of determining impedance, at least within a field of
endeavor.
Appellants also assert that the Examiner erred because the claimed
method produces a useful, tangible, and concrete result. App. Br. 9-10.
Appellants argue that the result of the claimed process is useful for reasons
disclosed in the Specification, “tangible because it produces a real-world
result,” and concrete because of its repeatability. Id. at 10. The Examiner
responds that the result of the claimed invention is not tangible because the
result could be mental activity. Ans. 18. The Examiner has the better
position. Moreover, even if we agreed with Appellants that the claimed
process generates a useful, tangible, and concrete result, this argument
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“inappropriately focuses on the result of the claimed invention rather than
the invention itself.” In re Ferguson, 558 F.3d 1359, 1364 (Fed. Cir. 2009).
For the foregoing reasons, Appellants’ arguments do not apprise us of
error in the rejection of claims 1-8 under § 101.1 Accordingly, we sustain
rejection II.

Rejection III
Appellants argue claims 1, 2, 4, 25, and 27 as a group. See App. Br.
10-13. We select independent claim 1 as representative. Claims 2, 4, 25,
and 27 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner finds that Mouchawar discloses most of the limitations
of independent claim 1, but does not disclose that the device used in its
method “is a vagus nerve stimulator device,” as recited in claim 1. Ans. 6.
The Examiner finds that Mouchawar discloses that its device is “an
exemplary implantable cardiac stimulating device” that can provide pacing
pulses and higher voltage stimulation, such as cardioversion or defibrillation
waveforms. Id. (citing Mouchawar, col. 3, l. 65-col. 4, l. 5). The Examiner
further notes Mouchawar discloses that “it will be understood that various

1 Regarding Appellants’ argument that certain unentered claim amendments
would remove the basis for the rejection under § 101 (App. Br. 2, 9), we
decline to issue an advisory opinion regarding the merits of claim limitations
not before us on appeal, and we lack jurisdiction over the procedural issue of
whether the Examiner properly denied entry of the amendments. See In re
Mindick, 371 F.2d 892, 894 (CCPA 1967) (refusal of examiner to enter
amendment after final rejection of claims is matter of discretion; if there is
abuse of discretion, the matter may be remedied by petition to
Commissioner of Patents; Board of Appeals does not consider issue whether
examiner’s refusal to enter proposed amendment after final rejection
constituted abuse of discretion).
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omissions, substitutions, and changes in the form of the detail of the device
illustrated may be made by those skilled in the art without departing from
the spirit of the present invention.” Id. at 6-7 (citing Mouchawar, col. 12, ll.
22-28).
The Examiner points to Weinberg, Fukui, Shelchuk, and Adams as
evidence that it was well-known practice to construct a cardiac stimulating
device with provisions for stimulating the vagus nerve, in addition to
provisions for pacing, cardioversion, and defibrillation. Id. at 7, 19-20. The
Examiner concludes that it would have been obvious to make Mouchawar’s
device a vagus nerve stimulating device by adding provisions for stimulating
the vagus nerve to treat arrhythmias. Id. at 7, 19.
Appellants argue that “[t]he person of ordinary skill in the art would
lack any apparent reason to modify the teachings of Mouchawar to render
Mouchawar’s apparatus a ‘vagus nerve stimulator,’ as that term is used
herein, because doing so would render Mouchawar’s apparatus unsuitable
for its stated purpose of providing both cardiac pacing and
cardioversion/defibrillation waveforms to the heart.” App. Br. 11.
Appellants explain that if one converted the leads Mouchawar uses for
pacing and cardioversion/defibrillation to serve as leads for stimulating a
vagus nerve, Mouchawar’s device could no longer provide pacing
cardioversion/defibrillation. Reply Br. 5. This argument does not apprise us
of error in the rejection because the Examiner does not suggest that it would
have been obvious to convert Mouchawar’s existing leads to provide vagus
nerve stimulation and thereby eliminate the pacing and
cardioversion/defibrillation provisions. Instead, the Examiner suggests that
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it would have been obvious to combine provisions for all of these functions
in one device. Ans. 7, 19-20.
Appellants also argue that a person of ordinary skill in the art would
have no apparent reason to add separate provisions for vagus nerve
stimulation, in addition to Mouchawar’s provisions for pacing and
cardioversion/defibrillation. Reply Br. 5-6. Appellants argue that such a
change would generate additional work and greater expense “to produce the
same result as Mouchawar’s cardiac pacing lead.” Id. These arguments do
not apprise us of error in the rejection. Contrary to Appellants’ assertion, the
Examiner’s undisputed finding that it was well-known to combine pacing,
cardioversion/defibrillation, and vagus nerve stimulation in an implantable
medical device provides an apparent reason that it would have been obvious
to a person of ordinary skill in the art to modify Mouchawar’s device to
provide all of these functions together. Furthermore, Appellants provide no
reasoning or evidence supporting their conclusory assertion that adding
vagus nerve stimulation to Mouchawar’s device would produce the same
result.
In the Reply Brief, Appellants add the more general argument that
“the Examiner has failed to provide a reason to combine, make
modifications, or a reasonable expectation[] of success from the combination
or modification.” Reply Br. 4. We do not agree. The Examiner provides
ample reasoning supporting the conclusion that it would have been obvious
to modify Mouchawar’s device in the proposed manner, including the
undisputed finding that it was well known to combine vagus nerve
stimulation with functions like those already provided by Mouchawar’s
device, and the reasoning that doing so would facilitate treatment of
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arrhythmia. See Ans. 7, 19-20. Additionally, the undisputed finding that
Weinberg, Fukui, Shelchuk, and Adams disclose combining vagus nerve
stimulation with cardiac stimulation functions like those already provided by
Mouchawar’s device amply demonstrates that a person of ordinary skill in
the art would have had a reasonable expectation of success in modifying
Mouchawar’s device in the suggested manner. See id.
For the foregoing reasons, Appellants’ arguments do not apprise us of
error in rejection III. Accordingly, we sustain rejection III.

Rejections IV-IX
Appellants advance the same substantive arguments against rejections
IV-IX as they do against rejection III. See App. Br. 11-19. Accordingly, for
the reasons discussed above, Appellants’ arguments do not apprise us of
error in rejections IV-IX, and we also sustain these rejections.

DECISION
We affirm the Examiner’s decision rejecting claims 1-9, 11-14, 24-30,
and 32-34.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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