Ex Parte Struble et al

Board of Patent Appeals and Interferences

Jul 31, 2012

11380353 (B.P.A.I. Jul. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CHESTER L. STRUBLE and
PIERRE A. GRANDJEAN
____________________

Appeal 2010-007946
Application 11/380,353
Technology Center 3700
____________________

Before: MICHAEL C. ASTORINO, MICHAEL L. HOELTER, and
BRETT C. MARTIN, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-007946
Application 11/380,353

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STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
rejection of claims 1, 2, 6, 8, 10, and 12-16. 1 We have jurisdiction under 35
U.S.C. § 6(b) 2002.
We REVERSE.

THE CLAIMED SUBJECT MATTER
Claim 8, reproduced below, with emphasis added, is illustrative of the
claimed subject matter:
8. A method of optimizing an electrogram (EGM)
sensitivity level in an implantable medical device, comprising:
a) detecting electrical events at a sensitivity level by
monitoring an EGM;
b) detecting pressure waves by monitoring an
intracardiac pressure;
c) analyzing corresponding electrical events and
pressure waves to identify the presence or absence of a one-to-
one correlation between detected electrical events and detected
pressure waves;
d) adjusting the sensitivity by one level in the absence of
the one-to-one correlation until the presence of the one-to-one
correlation is detected;
e) setting the sensitivity level as the optimal level when
the presence of the one-to-one correlation is detected; and
f) at the optimal sensitivity level, monitoring the timing
of detection of events from beat to beat to determine whether
the sensitivity level is marginal.

1 Appellants request our consideration of withdrawn claims 11 and 17. App.
Br. 10. However, since claims 11 and 17 have not been rejected by the
Examiner, we do not have jurisdiction over those claims.
Appeal 2010-007946
Application 11/380,353

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nichols
Duncan
Park
US 5,374,282
US 5,882,352
US 7,136,705 B1
Dec. 20, 1994
Mar. 16, 1999
Nov. 14, 2006

REJECTIONS
The Examiner made the following rejections:
Claims 1, 2, 6, and 8 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Nichols and Park. Ans. 3.
Claims 10 and 12-16 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Nichols, Park, and Duncan. Ans. 5.

ANALYSIS
Obviousness Based on Nichols and Park
Each of claims 1 and 8 calls for a step of analyzing a “one-to-one
correlation” to determine whether adjustment of a sensitivity level for
electrical events is necessary. For example, claim 1 recites:
using the device to analyze the detected electrical events
and pressure waves to determine the presence or absence of a
one-to-one correlation between detected electrical events and
pressure waves, the absence of the one-to-one correlation
indicating the need to adjust the sensitivity level

and claim 8 recites:

c) analyzing corresponding electrical events and pressure
waves to identify the presence or absence of a one-to-one
correlation between detected electrical events and detected
pressure waves;
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Application 11/380,353

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d) adjusting the sensitivity by one level in the absence of
the one-to-one correlation until the presence of the one-to-one
correlation is detected[.]

According to the Examiner, these method steps are allegedly taught by
Nichols via the following disclosure:
Nichols discloses counting the number of sensed
electrical events and storing the count in a SENSE
COUNT variable; counting the number of pressure
events and storing the result in a PULSE
PRESSURE COUNT variable; and subsequently
comparing the count values to determine whether
or not a one-to-one correlation exists (given a
difference tolerance of MAX DIFF to account for
small degrees of error). The sensitivity of the
sensors is adjusted if this correlation does not exist
Nichols: col. 9, lines 15-34).
Ans. 7.
As a threshold matter, we note that there appears to have been
confusion over exactly what the Examiner relied on in the teachings of
Nichols and Park for the “one-to-one correlation” and related analysis at
issue. See e.g., App. Br. 8. Eventually, the Examiner unequivocally states
that the “precise one-to-one correlation cited in the claims does not have to
be in the Park reference since Nichols firmly teaches such a process.” Ans.
9. Accordingly, we look only to the Examiner’s findings attributed to
Nichols for this teaching.
In regard to claim 1, the Examiner finds generally that Nichols teaches
“analyzing the detected signals and waves to determine if a one-to-one
correlation exists,” and then states that a “non-existent correlation is
determined if the number of electrical events differs from the number of
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detected pressure waves by a predetermined threshold.” Ans. 3-4.
Appellants argue that “Nichols merely counts cumulative number of events
over time and makes no attempt to determine whether the events correlate to
one another.” App. Br. 9. We see no explanation either in the Examiner’s
rejection or response to arguments that addresses Appellants’ argument that
a comparison of cumulative counts does not meet the claimed analysis of a
one-to-one correlation between electrical events and pressure waves.
Although we do not agree with Appellants’ argument that the one-to-one
correlation as claimed is “unquestionably absent from both references”
(App. Br. 7), we do conclude that the Examiner has not sufficiently
explained how mere cumulative counting and comparison of such
cumulative counts as taught in Nichols amounts to the claimed “analyzing
the detected signals and waves to determine if a one-to-one correlation
exists” in a manner sufficient to support the rejection. Accordingly, we
conclude that the rejection of claim 1 and its dependent claims 2 and 6 is
improper.
Similar to the Examiner’s lack of detail in explaining the rejection of
claim 1, with regard to claim 8 the Examiner finds that Nichols teaches
various steps of “detecting,” “determining,” “adjusting,” and “setting,” but
nowhere in the rejection does the Examiner explain how Nichols teaches the
claimed step of “analyzing corresponding electrical events and pressure
waves.” See Ans. 5. As with claim 1, because the Examiner has not
sufficiently explained how the cumulative count of Nichols amounts to the
claimed “analyzing . . . to identify the presence or absence of a one-to-one
correlation,” we find Appellants’ argument persuasive that “there can be no
‘analysis of corresponding events’, because no record of their one-to-one
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correspondence is kept, only of the correspondence of their total numbers.”
Rep. Br. 4. Because the Examiner has failed to point out where, and more
importantly how, the claimed “analyzing” occurs in Nichols, we agree with
Appellants. Accordingly, we do not sustain the rejection of claim 8.
Obviousness Based on Nichols, Park, and Duncan
Appellants contend that Duncan fails to cure the deficiencies noted
above. App. Br. 10. We agree with Appellants. For the same reasons as
discussed above with respect to claim 8, we do not sustain the Examiner’s
rejection of claims 10 and 12-16 under 35 U.S.C. § 103(a) as unpatentable
over Nichols, Park, and Duncan.

DECISION
For the above reasons, we REVERSE the Examiner’s decision to
reject claims 1, 2, 6, 8, 10, and 12-16.

REVERSED

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