Ex Parte Przybyszewski et al

Patent Trial and Appeal Board

Sep 4, 2014

11071136 (P.T.A.B. Sep. 4, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte PIOTR PRZYBYSZEWSKI,
CARL D. WAHLSTRAND, TIMOTHY J. DAVIS,
GREGORY A. HRDLICKA, and JAMES M. OLSEN
__________

Appeal 2012-003856
Application 11/071,136
Technology Center 3700
__________

Before DONALD E. ADAMS, ERIC B. GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL
This is a decision on appeal1 under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1, 4–8, 13, 15, 16, and 35–46. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The Real Party in Interest is Medtronic, Inc. (App. Br. 3).
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Application 11/071,136

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STATEMENT OF THE CASE
The Specification discloses “an implantable MRI [magnetic resonance
imaging]-safe stimulation lead for use in conjunction with an implantable
medical device wherein the impedance of the implanted medical device is
matched to that of the stimulation lead for decreasing the generation of heat
at the lead’s stimulation electrodes” (Spec. 1, ¶ 0002).
Claim 1 is representative of the claims on appeal, and reads as
follows:
1. An implantable medical system, comprising:
an implantable medical device having a stimulator output point;
an impedance adjusting circuit comprising at least a matching resistor
electrically coupled to the stimulator output point;
a conductive lead having a proximal end electrically coupled at least
to said matching resistor and having a distal end, the impedance adjusting
circuit having an impedance that causes the impedance looking into said
stimulator output point to be substantially matched to the characteristic
impedance of said lead so that a voltage present across the matching resistor
is at a maximum; and
at least one distal therapy electrode proximate the distal end of said
lead.

Issue
The Examiner has rejected claims 1, 5–8, 13, 15, 16, 35, and 37–46
under 35 U.S.C. § 102(e) as anticipated by Gray2 (Ans. 4-6). The Examiner
has also rejected claims 4 and 36 under 35 U.S.C. § 103(a) as obvious in
view of Gray (Ans. 6). We focus our initial analysis on independent claim 1.
The issue presented is: Has the Examiner established by a
preponderance of the evidence that Gray discloses an implantable medical

2 Gray et al., U.S. Patent 6,949,929 B2, Sept. 27, 2005.
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system comprising an implantable medical device with a stimulator output
point and a conductive lead, such that the system also comprises an
impedance adjusting circuit that “causes the impedance looking into said
stimulator output point to be substantially matched to the characteristic
impedance of said lead,” as required by claim 1?
Findings of Fact
FF1. The Examiner finds that “Gray discloses an implantable medical
system that is immune to interference from magnetic resonance imaging”
(Ans. 4).
FF2. The Examiner finds that the Gray system includes “an
implantable medical device 100 having a stimulator output point, an
impedance adjusting circuit 600 that may have a matching resistor . . . a
conductive lead 104 . . . and at least one distal therapy electrode 112” (id. at
4-5 (citing Gray at Figs. 1 and 18-21, col. 1, ll. 43-50, col. 15, ll. 58-65, and
col. 23, l. 63-col. 24, l. 24)).
FF3. The Examiner finds that Gray discloses that “impedance
adjusting circuit 600 has an impedance that causes the impedance looking
into the stimulator output point to be substantially matched to the
characteristic impedance of the lead” (id. at 5 (citing Gray at col. 21, ll. 61-
63)).
FF4. The Examiner finds that the claim 1 element of “the impedance
adjusting circuit having an impedance that causes the impedance looking
into said stimulator output point to be substantially matched to the
characteristic impedance of said lead so that a voltage present across the
matching resistor is at a maximum” (emphasis added) “naturally follows
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Application 11/071,136

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from the limitation ‘the impedance adjusting circuit having an impedance
that causes the impedance looking into said stimulator output point to be
substantially matched to the characteristic impedance of said lead’” (id.).
FF5. Gray discloses devices “for protecting a patient, physician,
and/or electronic components in an electrical device implanted or partially
implanted within the patient . . . [and] for protecting the conductive parts of
the electrical device from current and voltage surges induced by magnetic
resonance imaging systems” (Gray, col. 1, ll. 42-49).
FF6. Gray’s Figure 1 is shown below:

Figure 1 shows “a schematic of an implanted pacemaker arrangement in a
body” (id. at col. 1, ll. 13-14).
FF7. Gray discloses that the “pacemaker comprises a pulse generator
canister 102 housing a power supply . . . and electronic components . . . for
sensing and producing electrical pacing pulses” (id. at col. 12, ll. 26-29).
FF8. Gray discloses that the pulse generator canister 102 is connected
to “insulated conductive leads 104 that pass . . . into the heart 106” (id. at
col. 12, ll. 29-31).
FF9. Gray discloses that, by using “inductors in-line with the various
leads 104, it is possible to make the leads 104 have a high impedance for the
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low frequency MRI gradient fields frequency and a low impedance for the
MRI system’s radio-frequency frequency” (id. at col. 15, ll. 58-62).
FF10. Gray discloses that, “[a]lternatively, different impedances
(inductors/resistors/capacitors) may be switched in-line or out of the leads’
circuitry depending on the timing and application of the gradient and/or
radio-frequency fields” (id. at col. 15, ll. 62-65).
FF11. Gray discloses that, “[i]n another embodiment . . . the heating
and/or induced voltages on catheters or guide wires is controlled or
substantially eliminated by introducing or creating detuned characteristic
impedance at a proximal ends (ends that are not within the body) of the
catheters or guide wires” (id. at col. 21, ll. 11-16).
FF12. Gray’s Figure 18 is shown below:

Figure 18 shows “a circuit diagram representing a guide wire with an
unbalancing impedance circuit according to the concepts of the present
invention” (id. at col. 11, ll. 60-62).
FF13. Gray discloses that
a guide wire or catheter 650 has characteristic impedance due to
its intrinsic resistance from intrinsic resistor capacitors Rp and
its intrinsic inductance from intrinsic inductor L. To create the
unbalanced characteristic impedance at the proximal end of the
guide wire or catheter 650, a Balun 600 is placed along the
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Application 11/071,136

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guide wire or catheter 650. In other words, the Balun 600 is in
vitro.

(Id. at col. 21, ll. 49-55.)
FF14. Gray discloses that “the variable capacitors C1, C2, and C3 may
be used for both matching and providing a certain amount of balancing for
the guide wire or catheter 650 characteristic impedance” (id. at col. 21,
ll. 64-67)
Analysis
Appellants argue that the Examiner “has impermissibly mixed
embodiments when stating an anticipatory rejection” (App. Br. 5).
Appellants argue that the Examiner “points to column 15 of Gray regarding
the inclusion of a resistor within an embodiment of a lead of a pacemaker
. . . [but] relies on the balun 600 of the embodiment of a guide wire or
catheter of a probe discussed in column 21 to introduce the concept of
impedance matching” (id.). Appellants argue that “[a]t no point in the
discussion of adding resistance for the embodiment in column 15 is there a
discussion of adding resistance to create an impedance match” (id.).
The Examiner responds that Gray “describes switching impedances
. . . in-line with a lead’s circuitry to reduce the current generated by MRI
gradient fields” (Ans. 7, citing Gray at col. 15, ll. 58-65). The Examiner
further responds that Gray discloses that a Balun 600 may be “an impedance
that is switched in-line with a lead’s circuitry in order to control or
substantially eliminate heating and/or induced voltages on catheters and
guide wires . . . [and] provide balancing for the characteristic impedance of
the guide wire or catheter” (id., citing Gray at col. 21, ll. 64-67). The
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Examiner responds that Gray’s Figure 18 shows that the “Balun 600 is
intended to be placed between a catheter 650 and the implantable medical
device” (id.).
We find Appellants’ arguments to be persuasive. In order to support
an anticipation rejection, a prior art “reference must clearly and
unequivocally disclose the claimed [invention] or direct those skilled in the
art to the [invention] without any need for picking, choosing, and combining
various disclosures not directly related to each other by the teachings of the
cited reference.” In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (emphasis
added). For a finding of anticipation, “it is not enough that the prior art
reference . . . includes multiple, distinct teachings that [an ordinary] artisan
might somehow combine to achieve the claimed invention.” Net MoneyIN,
Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
Here, Gray discloses implantable pacemakers, with the suggestion that
different impedances, such as inductors, resistors, and capacitors, may be in-
line, or switched in-line, with the leads’ circuitry, depending on the
application of an MRI procedure (FFs 9 and 10). Gray also discloses, in a
separate embodiment, guide wires or catheters with a proximal end that may
comprise a balun, which comprises capacitors, that may be used to match
and provide a certain amount of balancing for the characteristic impedance
of the guide wire or catheter 650 (FFs 11-14). Gray discloses, however, that
the balun 600 is in vitro, or outside the body (FFs 11 and 13). The Examiner
has not pointed to anything in Gray as disclosing that features from the
guidewire or catheter embodiment, in which the proximal ends are outside
the body, are applicable to implantable medical devices such as pacemakers.
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Thus, choosing a particular feature from the embodiment disclosed in Gray’s
column 21, which is a guidewire or catheter that is electrically connected to
components outside the body, to apply to the implantable pacemaker
disclosed in Gray’s column 15 would require a degree of picking and
choosing that is unacceptable in a finding of anticipation.
Thus, we reverse the rejection of independent claim 1 and dependent
claims 5-8, 13, 15, and 16 as anticipated by Gray.
Independent claims 353 and 45,4 like claim 1, are directed implantable
medical systems that comprise an implantable medical device with a
stimulator output point, a conductive lead, and an “impedance adjusting
circuit having an impedance that causes the impedance looking into said
stimulator output point to be substantially matched to the characteristic
impedance of said lead.” Appellants also argue the rejection of independent
claims 35 and 45 for the reasons discussed above (App. Br. 5-7). Because
we have found, as discussed above, that Gray does not disclose an
implantable medical system comprising an “impedance adjusting circuit
having an impedance that causes the impedance looking into said stimulator
output point [of an implantable medical device] to be substantially matched
to the characteristic impedance of said lead,” we also reverse the rejection of
independent claims 35 and 45 and dependent claims 37-44 and 46.
The Examiner has also rejected claims 4 and 36 under 35 U.S.C.
§ 103(a) as obvious in view of Gray. Claims 4 and 36 depend from

3 The full text of independent claim 35 can be found in the Claims Appendix
to the Appeal Brief (App. Br. 11).
4 The full text of independent claim 45 can be found in the Claims Appendix
to the Appeal Brief (App. Br. 13).
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independent claims 1 and 35, respectively, and further require that the
“device is a neurostimulator.” The Examiner relies on Gray, as discussed
above, and further concludes that, although Gray does not disclose a
neurostimulator, “it would have been obvious to one having ordinary skill in
the art . . . to substitute the pacemaker of Gray with a neurostimulator” to
obtain predictable results (Ans. 6). Because the Examiner’s reasoning in
setting forth the obviousness rejection relies on the same reasoning as
discussed above for independent claims 1 and 35, we also reverse this
rejection.
Conclusion of Law
The preponderance of the evidence does not support the Examiner’s
finding that Gray discloses an implantable medical system comprising an
implantable medical device having a stimulator output point and a
conductive lead, such that the system also comprises an impedance adjusting
circuit coupled to both the stimulator output point and the lead that “causes
the impedance looking into said stimulator output point to be substantially
matched to the characteristic impedance of said lead.”

SUMMARY
We reverse the rejection of claims 1, 5–8, 13, 15, 16, 35, and 37–46
under 35 U.S.C. § 102(e). We also reverse the rejection of claims 4 and 36
under 35 U.S.C. § 103(a).

REVERSED
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