Medtronic, Inc.

Patent Trials and Appeals Board

Dec 30, 2021

2021001376 (P.T.A.B. Dec. 30, 2021)

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