Ex Parte Przybyszewski et alDownload PDFPatent Trial and Appeal BoardSep 4, 201411071136 (P.T.A.B. Sep. 4, 2014) Copy Citation 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). Appeal 2012-003856 Application 11/071,136 2 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. Appeal 2012-003856 Application 11/071,136 3 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 Appeal 2012-003856 Application 11/071,136 4 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 Appeal 2012-003856 Application 11/071,136 5 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 Appeal 2012-003856 Application 11/071,136 6 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 Appeal 2012-003856 Application 11/071,136 7 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. Appeal 2012-003856 Application 11/071,136 8 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). Appeal 2012-003856 Application 11/071,136 9 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 cdc Copy with citationCopy as parenthetical citation