Ex Parte Armstrong et alDownload PDFPatent Trial and Appeal BoardOct 22, 201310900573 (P.T.A.B. Oct. 22, 2013) 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. 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 Appeal 2011-006575 Application 10/900,573 2 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 Appeal 2011-006575 Application 10/900,573 3 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. Appeal 2011-006575 Application 10/900,573 4 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 Appeal 2011-006575 Application 10/900,573 5 “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 Appeal 2011-006575 Application 10/900,573 6 “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). Appeal 2011-006575 Application 10/900,573 7 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 Appeal 2011-006575 Application 10/900,573 8 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 Appeal 2011-006575 Application 10/900,573 9 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 mls Copy with citationCopy as parenthetical citation