Ex Parte ChowDownload PDFPatent Trial and Appeal BoardJun 23, 201612551201 (P.T.A.B. Jun. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/551,201 08/31/2009 99661 7590 06/27/2016 SHUMAKER & SIEFFERT, P.A. 1625 RADIO DRIVE SUITE 100 WOODBURY, MN 55125 FIRST NAMED INVENTOR Theodore Chow 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 ATTORNEY DOCKET NO. CONFIRMATION NO. P0031285.00/ll ll-138US01 2269 EXAMINER BAYS,PAMELAM ART UNIT PAPER NUMBER 3766 NOTIFICATION DATE DELIVERY MODE 06/27/2016 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 medtronic_crdm-docketing@cardinal-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THEODORE CHOW Appeal2014-005223 Application 12/551,201 Technology Center 3700 Before MICHAEL L. HOELTER, JILL D. HILL, and ERIC C. JESCHKE, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Theodore Chow (Appellant) 1 seeks review, under 35 U.S.C. § 134(a), of the Examiner's decision to reject claims 1-37. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellant identifies Medtronic, Inc. as the real party in interest. Appeal Br. 3. Appeal2014-005223 Application 12/551,201 The disclosed subject matter "relates to implantable medical devices, and, more particularly, to devices for monitoring and/or treatment of cardiovascular conditions." Spec. i-f 1. Claims 1, 12, 23, and 34 are independent. Claim 1 is reproduced below: 1. A method comprising: measuring an impedance of an electrical path that includes a portion of a heart wall a plurality of times during at least one portion of a cardiac cycle, the electrical path comprising a first electrode engaged to or within a wall of a chamber of a heart and a second electrode, wherein the second electrode is an extra-cardiac electrode that is disconnected from the heart; and calculating a value indicative of heart wall motion during the portion of the cardiac cycle based on the impedance measurements. REJECTIONS2 1. Claims 1-10, 12-21, 23-32, and 34--37 are rejected under 35 U.S.C. § 103(a) as unpatentable over Belalcazar (US 2008/0097539 Al, published Apr. 24, 2008) and Min (US 2005/0216067 Al, published Sept. 29, 2005). 2. Claims 11, 22, and 33 are rejected under 35 U.S.C. § 103(a) as unpatentable over Belalcazar, Min, and Paul (US 2004/0267142 Al, published Dec. 30, 2004). 2 The Examiner rejected claim 3 4 under 3 5 U.S. C. § 1 01 as directed to patent-ineligible subject matter. See Final Act. 2 (dated Apr. 25, 2013). In the Answer, the Examiner withdraws this rejection. See Ans. 5. 2 Appeal2014-005223 Application 12/551,201 DISCUSSION Rejection I -The rejection of claims 1-10, 12-21, 23-32, and 34-37 under 35 USC§ 103(a) A. Claims 1-10 In rejecting claim 1, the Examiner relied on Belalcazar to satisfy various limitations but stated that "Belalcazar does not disclose wherein the second electrode is an extra-cardiac electrode that is disconnected from the heart." Final Act. 3. The Examiner found, however, that Min discloses a system and method of determining impedance to assess cardiac wall motion (Paragraph 0003, 0014), wherein one electrode is an extra-cardiac electrode that is disconnected from the heart (SVC electrode or can electrode, Paragraph 0016, 0100), comprising a housing electrode of an implantable medical device or a superior vena cava coil electrode (SVC electrode or can electrode, Paragraph 0016, 0100, 0106). Id. at 3--4. The Examiner concluded that it would have been obvious to include an electrode such as an extra-cardiac electrode that is disconnected from the heart, wherein the electrode comprises one of a housing electrode of an implantable medical device or a superior vena cava coil electrode as taught by [Min], in the system and method disclosed by Belalcazar, in order to detect impedance over a larger or more specific area of the heart, as also taught by [Min] (Paragraph 0016, 0100, 0106). Id. at 4. Appellant argues that "one of ordinary skill in the art would not have modified the teachings of Belalcazar directed to measurement of cardiac wall motion to use an extra-cardiac electrode based on the teachings of Min" because neither Min nor Belalcazar "suggests that there would be any benefit from or reason for measuring impedance to assess cardiac wall motion when there is an extra-cardiac electrode that is disconnected from the heart." Appeal Br. 11. Although we agree with the Examiner (Ans. 8) that 3 Appeal2014-005223 Application 12/551,201 the lack of an explicit teaching or suggestion to combine the relied-upon disclosures does not necessarily undermine the Rejection, we agree with Appellant that the Examiner has not provided adequate articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to modify Belalcazar to include an extra-cardiac electrode disconnected from the heart to perform the step of "calculating a value indicative of heart wall motion during the portion of the cardiac cycle," as recited in claim 1. See In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006), cited with approval in KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Belalcazar teaches, as stated by Appellant, "that cardiac wall motion may be assessed by two electrodes," but "only teaches that cardiac wall motion may be assessed by two electrodes attached to the heart." Appeal Br. 11; see also Belalcazar i-f 5 ("A CRM system detects tachyarrhythmia using cardiac local impedance indicative of cardiac local wall motion. A cardiac local impedance signal indicative of an impedance of a cardiac region is sensed by using a pair of bipolar electrodes placed in that cardiac region."). Belalcazar also teaches, as stated by the Examiner, the use of extra-cardiac electrodes "for pacing and sensing purposes, but does not explicitly state that these electrodes are used to determine impedance values." Ans. 9 (citing Belalcazar i-f 29). Min teaches, as stated by Appellant, "how to measure an impedance via the RV-can in order to determine whether there has been an increase in thoracic fluids," but does not teach using RV-can impedance to assess cardiac wall motion. Appeal Br. 11 (discussing Min i-f 16). 3 3 Appellant seems to acknowledge that the "RV-can" configuration in Min involves a "first electrode engaged to or within a wall of a chamber of a 4 Appeal2014-005223 Application 12/551,201 Here, the Examiner has not set forth sufficient reasoning as to why a person of ordinary skill in the art, aware of the teachings above, would have added the "extra-cardiac electrode" of Min to the device of Belalcazar and then used the "first electrode" of Belalcazar with the "extra-cardiac electrode" of Min to provide the step of "calculating a value indicative of heart wall motion during the portion of the cardiac cycle," as recited. The reasoning provided by the Examiner-"to detect impedance over a larger or more specific area of the heart" (Final Act. 4) (citing Min i-fi-f 16, 100, 106}- does not support the conclusion of obviousness because the Examiner has not shown how that reasoning links the use of an "extra-cardiac electrode" to the recited step of "calculating a value indicative of heart wall motion during the portion of the cardiac cycle based on the impedance measurements." Further, even assuming that the relied-upon paragraphs from Min (i-fi-f 16, 100, and 106) do describe "several suitable areas for electrode placement for determining impedance values, depending on the area of the thoracic region of interest" (Ans. 9), the Examiner has not shown how these teachings provide the linkage discussed above. See Reply Br. 5 (arguing that paragraph 16 "teaches that, to the extent an extra-cardiac electrode is used, the extra-cardiac electrode is used to detect fluid overload" and that "to the extent a person of ordinary skill in the art would have been motivated to modify the system of Belalcazar to include an extra-cardiac electrode based on the teachings of [Min]," it would have been to "additionally detect fluid heart" (specifically, the right ventricle) and "a second ... extra-cardiac electrode that is disconnected from the heart" (specifically, on the housing). See Appeal Br. 11; see also Min i-f 16 (discussing "impedance between an RV electrode and the housing of 'can' of the device (i.e. RV-can impedance)"). 5 Appeal2014-005223 Application 12/551,201 overload with the extra-cardiac electrode, rather than to replace one of the cardiac electrodes used by the Belalcazar system for assessing cardiac wall motion with an extra-cardiac electrode"). The Examiner takes the position that Min teaches "assessing cardiac wall motion"4 because Min "discloses determining ventricular dilation/mass (Paragraph 0015) and cardiac wall thickness (Paragraph 0016) ... using impedance measurements (Abstract, Paragraph 0014)." Ans. 6. According to the Examiner, the position that "the assessment of ventricular dilation/mass and cardiac wall thickness reads on the limitation[] 'assessing cardiac wall motion'" is supported by paragraph 27 of Belalcazar, which provides: "As discussed in this document, the cardiac local impedance is indicative of cardiac local wall motion, which includes thickening of the cardiac wall due to systolic contraction." Ans. 7. We agree with Appellant (Reply Br. 4), however, that to the extent Min teaches "assessing cardiac wall motion" (e.g., by using impedance measurements to assess ventricular mass overload or thickening of heart tissue), Min teaches doing so only using two electrodes engaged to or within a chamber of the heart and does not teach using "an extra-cardiac electrode," as required by claim 1. See Min i-f 16 (discussing how "a V mass overload is identified if there is a significant increase in impedance between a right ventricular (RV) electrode and a left ventricular (L V) electrode (i.e. RV-L V impedance)" and how "any significant increase in RV-L V impedance is most likely indicative of a thickening of the myocardial tissue between left and right ventricles"). 4 Claim 1 does not recite "assessing cardiac wall motion." We consider this phrase to refer to the "calculating" step discussed above. 6 Appeal2014-005223 Application 12/551,201 For these reasons, we do not sustain the rejection of claim 1, or the rejection of claims 2-10, which depend from claim 1. B. Claims 12-21, 23-32, and 34--37 To reject the three independent claims in this group--daims 12, 23, and 34---the Examiner relied on the same reason to combine the teachings of Belalcazar and Min discussed above regarding claim 1. See Final Act. 3--4. Thus, for the reasons above, we also do not sustain the rejection of claims 12, 23, or 34 (or their dependent claims 13-21, 24--32, and 35-37). Rejection 2 - The rejection of claims 11, 22, and 33 under 35 USC§ 103(a) Claim 11 depends from claim 1, claim 22 depends from claim 12, and claim 33 depends from claim 23. Appeal Br. 27, 29, 31 (Claims App.). The Examiner's reliance on Paul does not remedy the deficiencies in the combined teachings of Belalcazar and Min, discussed above (see supra Reiection 1. S A). Thus. for the reasons above. we also do not sustain the .J / v / / / rejection of claims 11, 22, and 33. DECISION We REVERSE the decision to reject claims 1-37. REVERSED 7 Copy with citationCopy as parenthetical citation