Medtronic, Inc.Download PDFPatent Trials and Appeals BoardDec 30, 20212021001376 (P.T.A.B. Dec. 30, 2021) Copy Citation 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. 15/850,984 12/21/2017 Richard T. Stone C00003330USU2/13409160101 2889 64619 7590 12/30/2021 MEDTRONIC, INC. (NEURO/MRG) 710 MEDTRONIC PARKWAY NE MS-LC340 MINNEAPOLIS, MN 55432-5604 EXAMINER TEJANI, ANKIT D ART UNIT PAPER NUMBER 3792 NOTIFICATION DATE DELIVERY MODE 12/30/2021 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): ptodocketing@mrgs.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 RICHARD T. STONE and MICHAEL T. HEGLAND Appeal 2021-001376 Application 15/850,984 Technology Center 3700 Before STEFAN STAICOVICI, BRETT C. MARTIN, and BRANDON J. WARNER, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON REHEARING Appellant filed its REQUEST FOR REHEARING on November 5, 2021 (hereinafter “Request for Rehearing” or “Req. Reh’g.”) seeking rehearing of our Decision mailed September 30, 2021 (hereinafter “Decision” or “Dec.”). We grant the Request for Rehearing to the extent that we consider the Appellant’s arguments, but DENY the request to modify the Decision. Appellant first argues that the Board’s indefiniteness rejection is improper because “well understood mathematical principles make it clear that a portion of an arc can extend more parallel to a straight line than another portion of the arc.” Req. Reh’g 4. Appellant also admits that “an Appeal 2021-001376 Application 15/850,984 2 arc taken in its entirety is not parallel to a straight line.” Id. We find these statements incongruent. Under mathematical principles, two geometric entities typically have relationships to one another. Here, an arc and a straight line have a relationship and, as Appellant admits, an arc and a straight line are not parallel. Accordingly, if the arc and the line are not parallel, then we do not agree that meaningful portions of the arc can be more or less parallel to that straight line, at least according to mathematical principles. We agree with Appellant that under mathematical principles, an arc (including portions thereof) has tangent lines that may or may not be parallel along the arc and that at certain points, those tangent lines may be parallel to another line (e.g., a chord of the arc). See Req. Reh’g 5. Here, however, Appellant has not claimed such tangent lines, but a portion of the arc itself. Tangent lines apply to a single, discrete point along an arc and so can be easily measured and compared to other discrete points. The claims, on the other hand, do not refer to points, but rather refer to distal and proximal portions (to which tangent lines do not apply). Appellant also points to paragraph 65 of the Specification, which merely describes one specific embodiment in the drawings. Req. Reh’g 8. We appreciate that one of skill in the art might have understood how the distal portion in Figure 4 could be considered, perhaps in an imprecise colloquial sense, more parallel as described. The problem lies not in the description of this particular figure, but rather in the fact that a line and a portion of an arc cannot be understood as being more or less parallel. In Appellant’s Figure 4, the distal portion looks like it generally is reaching the inflection point of the arc and if continued much further would turn back toward the chord. In terms of claim interpretation, we do not agree that one Appeal 2021-001376 Application 15/850,984 3 of ordinary skill in the art would necessarily understand how to apply the claim language to a distal portion that actually does proceed past that inflection point and starts curving back toward the chord. In such a case, the tangent lines would reach parallel, but then turn back toward the chord and become less parallel. A skilled artisan would not be able to delineate whether the distal portion is “more” or “less” parallel. Neither Appellant’s claims nor paragraph 65 provides guidance to a skilled artisan on how to properly delineate the lengths of the portions and how to deduce whether such a portion is “more” or “less” parallel to the longitudinal axis (as opposed, for example, to comparing the angles between tangent lines along the recited portion and the longitudinal axis, which could be precisely delineated should the claims recite such relationships). DECISION While we have considered the Decision in light of the Request for Rehearing, we decline to modify it in any respect. Pursuant to 37 C.F.R. § 41.52, this decision is final for the purpose of judicial review. A party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. DENIED Copy with citationCopy as parenthetical citation