Ex Parte Irani et al

Patent Trial and Appeal Board

Dec 17, 2018

12293218 (P.T.A.B. Dec. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/293,218
122085 7590
Shartsis Friese LLP
One Maritime Plaza
18th floor
FILING DATE
03/10/2009
12/19/2018
San Francisco, CA 94111
FIRST NAMED INVENTOR
Afraaz Irani
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.
9275.10102 8657
EXAMINER
WEHRHEIM, LINDSEY GAIL
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
12/19/2018 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):
patents@sflaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AFRAAZ IRANI, MARK BIANCO,
DAVID TRAN, PETER DANIEL DEYOUNG,
MELANIE LISA ROMOLA WYLD, and TONY HANSHENG LI
Appeal2018-000109 1
Application 12/293,2182
Technology Center 3700
Before KENNETH G. SCHOPPER, AMEE A. SHAH, and
MATTHEWS. MEYERS, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
1 Our decision references the Appeal Brief filed Jan. 2, 2017 ("Br."), the
Examiner's Answer mailed July 19, 2017 ("Ans."), and the Final Office
Action mailed June 3, 2016 ("Final Act.").
2 According to Appellants, the real party in interest is "ENDURANCE
RHYTHM, INC." Br. 3.
Appeal2018-000109
Application 12/293 ,218
This is an appeal under 35 U.S.C. § 134 from the Examiner's Final
rejection of claims 1-14, 16, 17, 19, and 21-24. 3 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
According to Appellants, "[t]he invention provides devices, systems,
methods and kits for generating, charging and storing electrical energy that
are suitable for use with implanted medical devices, such as pacemakers and
defibrillators." Spec. ,r 20.
CLAIMS
Claims 1, 1 7, and 19 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A generator comprising:
a magnet and a conductor, the magnet and the conductor
configured to be continuously moveable without dampening to
conserve kinetic energy in relation to each other forming an
induction electrical generator wherein the generator
continuously produces an average power output between 40 µ W
and 1000 µ W in response to a heartbeat wherein the generator
is configured to be positioned at a distal end of a catheter lead
and electrically connected to an implanted medical device to
provide continuous and automatic charging of the medical
device, wherein the catheter lead is configured to be affixed at
the distal end to a heart wall of a patient.
Br. 13.
3 We consider the omission of claim 24 from Appendix A of the Appeal
Brief inadvertent as this claim is addressed in the body of the brief and has
not been cancelled.
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Application 12/293 ,218
REJECTIONS
1. The Examiner rejects claims 1, 2, 5-8, 10-13,4 19, 21, 22, and 24 under
35 U.S.C. § I03(a) as unpatentable over Johnston, 5 in view ofHolzer, 6
and White. 7
2. The Examiner rejects claims 3, 4, 17, and 23 under 35 U.S.C. § I03(a) as
unpatentable over Johnston in view of Holzer, White, and Bednyak. 8
3. The Examiner rejects claim 9 under 35 U.S.C. § I03(a) as unpatentable
over Johnston in view of Holzer, White, and Navarro. 9
4. The Examiner rejects claims 14 and 16 under 35 U.S.C. § I03(a) as
unpatentable over Johnston in view of Holzer, White, and Harris. 10
DISCUSSION
With respect to the rejections of each of the independent claims,
Appellants rely on the same arguments. See Br. 7-12. Thus, we discuss
claim 1 below, and our analysis is equally applicable to independent claims
17 and 19.
4 Although the Examiner lists claims 14 and 16 in the heading for this
rejection, the body of the rejection does not address these claims. Rather,
the Examiner addresses these claims in a subsequent rejection, as listed
below.
5 Johnston et al., US 5,941,904; iss. Aug. 24, 1999 (hereinafter "Johnston").
6 Holzer, US 2005/0256549 Al; pub. Nov. 17, 2005.
7 White et al., US 2006/0217776 Al; pub. Sept. 28, 2006 (hereinafter
"White").
8 Bednyak, US 2004/0222637 Al; pub. Nov. 11, 2004.
9 Navarro et al., US 2005/0273170 Al; pub. Dec. 8, 2005 (hereafter
"Navarro").
10 Harris et al., US 2008/0021341 Al; pub. Jan. 24, 2008 (hereinafter
"Harris").
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Appeal2018-000109
Application 12/293 ,218
With respect to claim 1, the Examiner finds that Johnston discloses a
generator and lead including a magnet and conductor that act as a kinetic
electrical generator, which is fixed to a distal portion of a catheter lead
coupled to an implantable medical device ("IMD"). Final Act. 3 ( citing
Johnston Fig. 2, accelerometer 100). The Examiner finds that "the magnet
would be exposed to acceleration on a continuous basis and therefore
provide continuous voltage generation" because of its proximity to the heart
wall, which is continuously moving as the heart beats. Id. The Examiner
also finds that Johnston specifically describes, in a separate embodiment,
"the use of the accelerometer as a power source" when "coupled to a power
conditioner circuit to convert the voltage into a useable form for storage in
an IMD." Id. The Examiner concludes that it would have been obvious to
provide continuous and automatic charging of the IMD based on these
disclosures. Id. at 3--4.
The Examiner acknowledges that Johnston "does not explicitly
disclose that the configuration of the device is such that the magnet and
conductor are configured to be continuously moveable without dampening to
conserve kinetic energy in relation to each other." Id. at 4. However, the
Examiner finds that Holzer discloses providing "a microgenerator that
includes a magnet 1130 and conductor 1110 that move relative to one
another in order to produce continuous electricity ... in conductor 1110
where the compartment experiences movement from the heart." Id. ( citing
Holzer ,r,r 164, 191). The Examiner concludes that it would have been
obvious to incorporate these features into Johnston's device. Id. at 4--5.
Finally, the Examiner concludes that, based on the teachings of White, it
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Appeal2018-000109
Application 12/293 ,218
would have been obvious for the device to produce the power output
required by the claim. Id. at 5.
We agree with and adopt the Examiner's findings and conclusions
with respect to claim 1. See Final Act. 2-5; see also Ans. 2-7. As discussed
below, we are not persuaded of error by Appellants' arguments.
Appellants argue that "Johnston does not teach or suggest a
microgenerator. Johnston teaches an accelerometer which may transiently
produce energy as a byproduct of acceleration." Br. 7. We disagree for the
reasons provided by the Examiner. See, e.g., Ans. 4--5. In particular,
Johnston specifically describes that the accelerometer 100 generates a
voltage in response to acceleration and that the output voltage may be "large
enough ... to provide useful electrical power to directly operate at least
some of the pacemaker's electronics." Johnston, col. 9, 11. 10-17. Johnston
further discloses a specific embodiment in which the power provided by the
accelerometer is stored such that it "may be used to operate some of the
pacemakers electronics, such as refreshing dynamic random access
memory." Id. at col. 9, 11. 17-30. Although we do not make a specific
finding regarding the appropriate construction of the term "generator" as
claimed, we find that Johnston's discloses, as described above, a generator at
least under the definitions set forth by Appellants, i.e., Johnson teaches that
the accelerometer converts mechanical energy into electrical energy. See
Br. 9.
Appellants also argue that "Johnston does not teach continuous
generation of energy created by a generator positioned distally within a tip
of a cardiac lead." Br. 8. In support, Appellants point to a portion of
Johnston's disclosure, which indicates that Johnston's accelerometer "forces
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Application 12/293 ,218
a moveable magnet to its center position after acceleration ceases," and
Appellants argue that Johnston discloses periods of rest in which energy
generation would not be continuous. Id. (citing Johnston, col 5, 11. 1-14).
We are not persuaded of error. Although Appellants point to one statement
in Johnston indicating that the accelerometer is not always in motion,
Appellants do not address the full scope of the rejection before us.
As indicated above, the rejection relies on a combination of
Johnston's disclosures to conclude that it would have been obvious to
provide continuous and automatic charging of an IMD when it is coupled to
the heart. Final Act. 3--4; see also Ans. 5---6. Further, we agree with the
Examiner that it was known in the art that the heart provides a continuous
source of motion from which energy may be generated. See Ans. 6. In
particular, this finding is supported by the Examiner's findings with respect
to Holzer, which discloses that it was known to provide a magnet and
conductor to produce continuous electricity in relation to the movement of
the heart. See Final Act. 4; see also Holzer ,r,r 164, 191. Thus, we are
unpersuaded of error because Appellants' argument fails to address
adequately the Examiner's conclusion that it would have been obvious to
provide continuous and automatic charging of the IMD in response to the
heartbeat.
Based on the foregoing, we are not persuaded of error in the rejection
of claim 1. For the same reasons, we are not persuaded of error in the
rejections of independent claims 17 and 19, for which Appellants rely on the
same arguments. Accordingly, we sustain the rejections of claims 1, 17, and
19. We also sustain the rejections of dependent claims 2-14, 16, and 21-24,
for which Appellants do not provide separate arguments.
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CONCLUSION
We AFFIRM the rejections of claims 1-14, 16, 17, 19, and 21-24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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