Medtronic, Inc.

Patent Trials and Appeals Board

Oct 9, 2020

15601708 - (D) (P.T.A.B. Oct. 9, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/601,708 05/22/2017 Venkat R. Gaddam 1123-344US01/
C011469.USU1
5064
71996 7590 10/09/2020
SHUMAKER & SIEFFERT , P.A
1625 RADIO DRIVE , SUITE 100
WOODBURY, MN 55125
EXAMINER
LEVICKY, WILLIAM J
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
10/09/2020 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
rs.patents.five@medtronic.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VENKAT R. GADDAM, REID K. BORNHOFT,
DAVID P. OLSON, LEROY L. PERZ, and MANDLA SHONGWE

Appeal 2020 -000248
Application 15/601,708
Technology Center 3700
____________

Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–21. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real parties in interest as
Medtronic, Inc. and Medtronic plc, “the ultimate parent entity of Medtronic,
Inc.” Appeal Br. 3.
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Application 15/601,708

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BACKGROUND
The Specification “relates to medical devices and, more particularly,
systems and methods for recharging a power source of a medical device.”
CLAIMS
Claims 1, 13, and 20 are the independent claims on appeal. Claims 1
and 13 are illustrative of the appealed claims and recite:
1. A method comprising:
receiving, by processing circuitry, an activity signal
generated by an implantable medical device and indicative of an
activity level of a patient during charging of a rechargeable
power source of the implantable medical device implanted in the
patient;
determining, by the processing circuitry and based on the
activity signal, a patient status for the patient during charging of
the rechargeable power source; and
controlling, by the processing circuitry and based on the
patient status, charging of the rechargeable power source of the
implantable medical device via an external charging device.
13. A system comprising:
an implantable medical device comprising processing
circuitry and a rechargeable power source, wherein the
processing circuitry is configured to:
receive an activity signal generated by the implantable
medical device, the activity signal indicative of an activity level
of a patient during charging of the rechargeable power source of
the implantable medical device implanted in the patient;
determine, based on the activity signal, a patient status for
the patient during charging of the rechargeable power source;
and
control, based on the patient status, charging of the
rechargeable power source of the implantable medical device.
Appeal Br. 33, 36.
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REJECTIONS
1. The Examiner rejects claims 13–19 and 212 under 35 U.S.C. § 112(b) as
indefinite.
2. The Examiner rejects claims 1–8 and 10 under 35 U.S.C. § 102(a)(1) as
anticipated by Scott.3
3. The Examiner rejects claims 1, 2, 10–13, 15–18, and 20 under 35 U.S.C.
§ 102(a)(1) as anticipated by Forsell.4
4. The Examiner rejects claims 3–9, 14, 19, and 21 under 35 U.S.C. § 103
as unpatentable over Forsell in view of Scott.
DISCUSSION
Indefiniteness
With respect to claim 13, the Examiner finds that “it is unclear what is
producing [the activity] signal in the implantable medical device. Is it an
activity sensor? Is it processing circuitry? What element in the implantable
medical device generates the activity signal?” Final Act. 8. The Examiner
also states that “[i]t is unclear if the Applicant is requiring the signal to be an
activity signal or if the IMD has to be capable of receiving an activity
signal.” Id. at 3. The Examiner assumes that the claim intends to recite “an
activity signal produced by an activity sensor,” but the Examiner finds that
“it is unclear . . . if the Applicant is intending for the processing circuitry to
be capable of receiving an activity signal and therefore, not requiring the

2 The Examiner has withdrawn the rejection of claims 1–10 and 20 under
this heading. Ans. 3.
3 Scott et al., US 2014/0163644 A1, pub. June 12, 2014.
4 Forsell, US 2011/0278948 A1, pub. Nov. 17, 2011.
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activity signal or the activity sensor mak[es] the metes and bounds of the
claims unclear.” Id.
We disagree for the reasons provided by Appellant. See Appeal
Br. 10. Specifically, we agree that “[o]ne of ordinary skill in the art would
merely understand that claim 13 is not limited to any particular type of
component of the implantable medical device that generates the activity
signal.” Id. This issue relates to the breadth of the claim and the
Specification supports the breadth of the claim by providing “examples of
how one or more sensors of [the] implantable medical device . . . generate an
activity signal, which is received by processing circuitry located within” the
implantable medical device. See id.; see also Spec. ¶ 29. We also note that
the claim is written using the open ended language “a system comprising,”
which indicates the structure of the device is not limited to the processing
circuitry and power source expressly recited in the claim. Thus, one of
ordinary skill in the art would understand that the implantable medical
device may include other components used to generate an activity signal,
such as those specifically recited in the Specification. See Reply Br. 5–6.
The Examiner also determines that claim 13 is indefinite because the
claim requires control of charging, but “it is unclear what is being
controlled? Is a second power source being activated to provide power to
the rechargeable power source? Does the device alert the patient to move to
a recharging station? Is the secondary power source connected to the
processing circuitry? Is there a switch?” Final Act. 8–9. The Examiner
finds that “it is unclear how the processing circuitry controls charging of the
rechargeable power source, [and s]ince the claim does not require an energy
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source it is unclear if the Applicant is controlling a structure or stating that
the processing circuitry is capable of controlling another structure.” Id. at 3.
As with the first rejection of claim 13, we agree with Appellant that the
Examiner appears to have only indicated in the rejection that the claim is
broad and not that any indefiniteness issue exists with respect to the claim
requirement that the medical device controls charging of the rechargeable
power source. See Appeal Br. 10–11; see also Reply Br. 6; Spec. ¶ 29.
Regarding claim 14, the Examiner finds that “it is unclear what
element of the implantable medical device generates the activity signal to
provide current posture. Is a signal from an activity sensor? Or does the
processing circuitry receive a posture from memory and that is the current
posture?” Final Act. 9. We are persuaded of error for the reasons provided
by Appellant, which are substantially the same reasons discussed above with
respect to claim 13. See Appeal Br. 12.
With respect to claim 15, the Examiner finds that the claim is unclear
“because the claim does not positively recite a sensor corresponding to one
or more physiological parameters; making it unclear how the sensor signals
are received by the processing circuitry.” Final Act. 9. The Examiner
rejects claim 16 for the same reasons. Id. Again, we are persuaded of error
for the reasons provided by Appellant. See Appeal Br. 13–14.
The Examiner next rejects claim 17 and 18 because “it is unclear how
this occurs[, i.e., how the external charging device receives an output signal
and controls the power level,] as the external charging device has no
components for controlling or receiving a signal. Does the external charging
device have a controller? Does it have a telemetry module? Dependent
claims 18 and 19 inherit the same deficiencies.” Final Act. 9. We agree
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with Appellant that this rejection is in error for the essentially the same
reasons previously discussed. See Appeal Br. 14–15.
Claim 21 depends from independent claim 20 and further recites
“wherein the activity signal comprises a current posture for the patient and
one or more signals related to an activity level of the patient.” Appeal
Br. 40. The Examiner determines that the claim “is unclear because . . . the
activity signal has not been positively recited making it unclear how it can
be further limited.” Final Act. 10–11. The Examiner further explains that
“[i]t is not clear what structure(s) change or which one(s) are not used when
the activity signal comprises a current posture for the patient.” Ans. 10.
We fail to see how the claim is unclear based on the Examiner’s
determination. The rejection and the Examiner’s Answer indicate that the
rejection is based on claim 21’s failure to further limit the claim from which
it depends, independent claim 20. Yet the Examiner does not explain
adequately why the structure of the device must change or why any specific
element of the base claim must not be used when the activity signal
comprises a posture. Rather, the claim limits claim 20 by further requiring
that the activity includes a signal indicative of the current posture and one or
more signals related to an activity level of the patient. Thus, the claim is
clear that the means provided in claim 20 are further limited because they
must be able to perform the functions of claim 20 where the activity signal is
a specific signal as required by claim 21.
Based on the foregoing, we are persuaded of error in the rejection of
claims 13–19 and 21 under 35 U.S.C. § 112(b). Accordingly, we do not
sustain this rejection.
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Anticipation by Scott
We are persuaded by Appellant’s argument that the Examiner has not
established that Scott discloses a method in which a patient status is
determined during charging of a rechargeable power source and based on
that status, controlling charging of a rechargeable power source in an
implantable medical device. See, e.g., Reply Br. 18.
With respect to claim 1, for example, the Examiner finds that Scott
teaches a method including determining and controlling steps, as claimed.
Final Act. 11 (citing Scott ¶¶ 77, 88, 91, 92, 102). The Examiner explains
that Scott discloses that a feedback control signal “is requested by external
device 340 when changes in patient activity, patient posture is detected from
IMD sensors 324” and that Scott “disclose[s] the feedback control signal is
transmitted to external device 340 by telemetry module 320 via link 370 and
used by external device 340 to control and optimize power transfer for
charging a charge storage device 318.” Id. at 6 (citing Scott ¶¶ 76, 109).
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[A]nticipation of a claim
under § 102 can be found only if the prior art reference discloses every
element of the claim . . . .” In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986)
(citing Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co.,
730 F.2d 1452, 1457 (Fed. Cir. 1984)). “[A]bsence from the reference of
any claimed element negates anticipation.” Kloster Speedsteel AB v.
Crucible Inc., 793 F.2d 1565, 1571 (Fed. Cir 1986).
Here, the Examiner has failed to explain adequately how Scott
discloses any determination of a patient status or controlling the charging of
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a rechargeable power source of the implantable medical device based on the
patient status. In the rejection, the Examiner cites, without explanation, to
Scott paragraphs 91 and 92 to show that Scott discloses determining a
patient status. Final Act. 11. These paragraphs describe a posture sensor
and an activity sensor, but without further explanation, it is not clear how
they provide a determination of a patient status that is then used for
controlling charging.
In the Answer, with respect to the rejection over Forsell, the Examiner
finds that “‘patient status’ has not been defined and includes the energy
requirements of the individual . . . as obtained from the parameters received
of the patient consisting of body temperature, blood pressure, heartbeats and
breathing.” Ans. 13. However, the Examiner does not provide further
explanation regarding how Scott discloses determining a patient status. See
id. at 10–11.
In view of the foregoing, we find that the Examiner has not
established that Scott discloses a method including a determining step and a
controlling step as required by claim 1. Accordingly, we do not sustain the
rejection of claims 1–8 and 10 as anticipated by Scott.
Anticipation by Forsell
We are also persuaded of error in the rejection over Forsell for reasons
similar to those discussed above.
With respect to claim 1, the Examiner finds that Forsell discloses a
method including the claimed determining and controlling steps. Final
Act. 14–15 (citing Forsell ¶¶ 250–253). Regarding the determination of a
patient status, the Examiner finds that
Forsell teaches using the obtained signal (blood pressure, body
temperature, heartbeats, and breathing) which are indicative of
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an activity level and determining a patient status (which is a
broad term and includes anything from the patient is alive, to how
much energy the patient has consumed) for controlling charging
of the rechargeable power source.
Id. at 7. The Examiner further explains that the rejection relies on the
determination of “the currently required amount of energy . . . based on
measurements” of Forsell’s sensors as the claimed determination of a patient
status. Ans. 12 (emphasis omitted). And as noted above, the Examiner also
determines that “‘patient status’ has not been defined and includes the
energy requirements of the individual . . . as obtained from the parameters
received of the patient consisting of body temperature, blood pressure,
heartbeats and breathing.” Id. at 13.
We agree with Appellant that the Examiner does not explain
adequately how Forsell discloses a determining and controlling step as
claimed. Specifically, we agree with Appellant that the Examiner fails to
establish that Forsell discloses determining a patient status. To the extent
the Examiner relies on the “energy requirements of the individual” as a
patient status, we agree with Appellant that the Examiner has not cited to
any portion of Forsell that explains that the activity signals relied upon are
used to determine the energy requirements of the patient. See Reply Br. 21–
22. Rather, Forsell discloses that the energy balance or the currently
required amount of energy is determined based on measured activity signals
and that this determination is related to the energy used or the energy
required by the implantable medical device. See Forsell ¶¶ 250, 253. Thus,
the energy determination relates to the status of the medical device and not
the status of the patient. Also, we note that Forsell separately discloses
detecting the “current condition of the patient” based on parameters
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including body temperature, blood pressure, heartbeats, breathing. Id. ¶ 250.
However, Forsell does not disclose that subsequent control of charging of a
rechargeable power source is based on the current condition of the patient.
See, e.g., id.
Based on the foregoing, we find that the Examiner has not established
that Forsell discloses a method including a determining step and a
controlling step as required by claim 1, or the similar requirements of
independent claims 13 and 20. Accordingly, we do not sustain the rejection
of claims 1, 2, 10–13, 15–18, and 20 as anticipated by Forsell.
Obviousness
With respect to the rejection of claims 3–9, 14, 19, and 21 as obvious,
the Examiner does not provide any further reasoning or citation to evidence
that cures the deficiency in the rejections of the independent claims, as
discussed above. Accordingly, we also do not sustain the rejection of
claims 3–9, 14, 19, and 21 as obvious over Forsell and Scott.

CONCLUSION
We REVERSE the rejections of claims 1–21.

In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
13–19, 21 112(b) Indefiniteness 13–19,
21
1–8, 10 102(a)(1) Scott 1–8, 10
1, 2, 10–13,
15–18, 20
102(a)(1) Forsell 1, 2, 10–
13, 15–
18, 20
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
3–9, 14, 19,
21
103 Forsell, Scott 3–9, 14,
19, 21
Overall
Outcome
1–21

REVERSED