Ex Parte Anderson et al

Patent Trial and Appeal Board

Dec 17, 2018

14694952 (P.T.A.B. Dec. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/694,952 04/23/2015
27581 7590 12/19/2018
Medtronic, Inc. (CVG)
8200 Coral Sea Street NE.
MS:MVC22
MINNEAPOLIS, MN 55112
FIRST NAMED INVENTOR
Thomas A Anderson
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
C0006625.USU1/LG10126.L33 4298
EXAMINER
WEHRHEIM, LINDSEY GAIL
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
12/19/2018 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):
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 THOMAS A. ANDERSON, TODD J. SHELDON,
MATTHEW D. BONNER, and NOELLE C. NEAFUS
Appeal2018-000047
Application 14/694,952
Technology Center 3700
Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
MATTHEWS. MEYERS, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's rejection of claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
1 According to Appellants, Medtronic, Inc., and Medtronic plc, are the real
parties in interest. Appeal Br. 3.
Appeal2018-000047
Application 14/694,952
According to Appellants, "[t]he disclosure relates ... to cardiac
pacing using a leadless pacing device." Spec. ,r 2. Claims 1 and 12 are the
independent claims on appeal. Below, we reproduce claim 1 as
representative of the appealed claims.
1. A system comprising:
a leadless pacing device comprising:
a stimulation module configured to generate pacing
pulses;
a sensing module;
a processing module;
a housing configured to be implanted within a
chamber of a heart of a patient, wherein the housing
encloses the stimulation module, the sensing module, and
the processing module; and
a first electrode electrically coupled to the sensing
module and the stimulation module; and
an extension extending from the housing and comprising:
a body mechanically connected to the housing and
comprising a conductor electrically connected to at least
one of the sensing module or the stimulation module;
a second electrode carried by the body and
electrically connected to the conductor; and
an eyelet at a proximal end of the extension.
REJECTION AND PRIOR ART
The Examiner rejects claims 1-20 under 35 U.S.C. § 103 as
unpatentable over Bomzin et al. (US 2013/0116741 Al, pub. May 9, 2013)
("Bomzin") and Bonner et al. (US 2013/0053921 Al, pub. Feb. 28, 2013)
("Bonner").
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Application 14/694,952
ANALYSIS
Claims 1-3, 6, and 7
Appellants argue against the Examiner's obviousness rejection of
claims 1-3, 6, and 7 as a group. Appeal Br. 5-11. We choose independent
claim 1 for our analysis, and remaining dependent claims 2, 3, 6, and 7 stand
or fall with claim 1. See 37 C.F.R. § 41.37 (c)(l)(iv). For the following
reasons, we sustain the Examiner's rejection of claims 1-3, 6, and 7.
The Examiner finds that Bomzin discloses a majority of claim 1 's
recitations, although Bomzin discloses a coupling member different from the
claimed eyelet at the extension's proximal end. See, e.g., Final Action 3--4.
Nonetheless, the Examiner finds that Bonner discloses an eyelet, and finds
that "[i]t would have been obvious ... to include the holding member
featuring an eyelet as defined by Bonner in the invention of Bomzin, since
such a modification would provide the predictable results of easier and more
effective implantation/removal of the implanted device as facilitated by the
holding member." Id. at 4--5.
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co., v. Teleflex Co., 550 U.S. 398,416 (2007). We disagree with
Appellants that the Examiner errs because "a person of ordinary skill in the
art would not have had a reason, with rational underpinning, to modify
Bomzin's connection member 394 to include Bonner's holding member 350
in the manner proposed by the Examiner," as
the Examiner failed to cite to any factual basis to support this
assertion. The Examiner failed to cite to any art that compares
structures like Bonner's holding member 350 and Bomzin's
connection member 394, much less indicate Bonner's holding
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Application 14/694,952
member 3 50 would provide for "easier and more effective
implantation/removal of the implanted" compared to the
structure already described by Bomzin.
Appeal Br. 7 (footnotes omitted). Specifically, we do not agree with
Appellants that the Examiner must establish that using Bonner's eyelet
provides "easier and more effective implantation/removal of the implanted
device" (Final Action 5) as compared to Bomzin's configuration. It is
enough that, as recognized by the Examiner, using Bonner's eyelet with
Bomzin's arrangement "would provide the predictable results of eas[y]
and ... effective implantation/removal of the implanted device." Final
Action 4--5; see also KSR, 550 U.S. at 416. It also is sufficient that the
Examiner recognizes that when
[ a ]pp lied to the invention of Bomzin, the holding member of
Bonner would provide an alternative means to couple to an
implantation/placement feature (where Bomzin discloses the
device end coupled to a pusher ... [,] and Bonner discloses the
holding member coupled to a pushing member for
implantation ... as known in the art.)"
Final Action 4 ( citations omitted). Restated, the Examiner again recognizes
that using Bonner's eyelet would have provided a predictable result.
For reasons similar to those discussed above, we do not agree with
Appellants that the Examiner errs because "the Examiner has not shown an
equivalency of the components of Bomzin and Bonner as recognized in the
prior art." Appeal Br. 8 (footnote omitted). Specifically, because we agree
with the Examiner that using Bonner's eyelet with Bomzin' s arrangement
would provide predictable results for the reasons discussed supra, the
combination would have been obvious regardless of whether Bonner's eyelet
was recognized as equivalent to Bomzin's coupling member.
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Application 14/694,952
Further, Appellants do not persuade us that the Examiner errs
"because the Examiner's proposed modification to Bomzin' s connection
member ... in view of Bonner would have changed the principle of
operation of Bomzin's connection member." Appeal Br. 8; see also id. at 8-
11. More specifically, even if we agree with Appellants that Bomzin's
principle of operation is to secure a leadless intra-cardiac medical device
within a patient's heart by rotating the device, Appellants do not persuade us
that Bomzin's medical device modified to include Bonner's eyelet cannot be
secured by rotation of the device.
Claims 4 and 5
We agree with Appellants that because the Examiner relies on an
element from Bonner's Figure 4B to disclose claim 3 's recitation of an
eyelet "opening [that] defines a center axis substantially aligned with a
longitudinal axis of [the] extension," the Examiner does not support
adequately that the element in the figure also discloses claim 4' s recitation
of an eyelet "opening [that] defines a center axis that is not aligned with a
longitudinal axis of the extension." Appeal Br. 11; see also Final Action 5-
6. Thus, we do not sustain the Examiner's obviousness rejection of
dependent claims 4 and 5.
Claims 8 and 9
Appellants argue that the Examiner errs because "[t]he Examiner
failed to establish that Bomzin in view of Bonner discloses" claim 8' s and
claim 9' s recitation "that 'the body is a self-supporting body."' Appeal
Br. 12; see also id. at 12-13. Appellants do not persuade us of error,
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Application 14/694,952
however. The Examiner's finding that Bornzin's description that "braid 380
may be made of steel or wire mesh, or have a honeycomb pattern that resists
compression of extension along the length of the extension body" discloses
the claimed self-supporting body is adequate. Answer 7 (internal quotations
omitted). Importantly, Appellants do not provide any evidence to the
contrary. Therefore, we sustain the Examiner's obviousness rejection of
claims 8 and 9.
Claim 10
Appellants argue that the Examiner's obviousness rejection is in error
because "the Examiner has not shown that modifying Bornzin's housing 302
to include Bonner's closed shell 101 and ... holding member 350 would
have resulted in '[a] second electrode [that] defines a blind hole configured
to receive an eyelet,' as recited in claim 10." Appeal Br. 14; see also id.
at 13-15. We note, however, that the Examiner's rejection does not
"modify[] Bornzin's housing 302 to include Bonner's closed shell 101
and ... holding member 350" (id. at 14)- instead the Examiner includes
Bonner's eyelet with Bornzin's housing and second electrode (see Final
Action 2-5, 8-9). Further, we agree with the Examiner that so modifying
Bonner would have resulted, using the claims' nomenclature, in an eyelet
disposed in a blind hole in Bonner's second electrode. Answer 7-8.
Claim 11
Appellants argue that the Examiner errs because "[one] would not
have understood that modifying Bornzin's leadless intra-cardiac medical
device to include Bonner's holding member 350 would have resulted in
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Application 14/694,952
Bomzin's electrode 368 and Bonner's holding member 350 being portions
of a common body." Appeal Br. 15; see also id. at 15-16. We disagree with
Appellants, because Appellants do not persuade us, for example, that the
Examiner errs by finding that "[t]he [claimed] 'common body' ... would be
the overall structure of the implantable device." Answer 8.
Claims 12-14 and 17
Appellants argue that the Examiner's obviousness rejection of
independent claim 12 and its dependent claims 13, 14, and 17 is in error "for
at least the reasons presented above with respect to claim 1." Appeal Br. 16.
Inasmuch as we disagree with Appellants that claim 1 's rejection is in error,
we sustain the rejection of claims 12-14 and 17.
Claims 15 and 16
We do not sustain the rejection of dependent claims 15 and 16, for
substantially the same reasons we do not sustain the rejection of claims 4
and 5.
Claim 18
Appellants argue that the Examiner's obviousness rejection of
claim 18 is in error "for at least the reasons discussed with respect to
claim 8 ... and claim 12." Appeal Br. 17. Inasmuch as we disagree with
Appellants that the rejection of either claim 8 or claim 12 is in error, we
sustain claim 18' s rejection.
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Application 14/694,952
Claim 19
Appellants argue that the Examiner's obviousness rejection of
claim 19 is in error "for at least the reasons discussed with respect to
claim 10 ... and claim 12." Appeal Br. 1 7. Inasmuch as we disagree with
Appellants that the rejection of either claim 10 or claim 12 is in error, we
sustain claim 19' s rejection.
Claim 20
Appellants argue that the Examiner's obviousness rejection of
claim 20 is in error "for at least the reasons discussed with respect to
claim 11 ... and claim 12." Appeal Br. 17. Inasmuch as we disagree with
Appellants that the rejection of either claim 11 or claim 12 is in error, we
sustain claim 20's rejection.
DECISION
We AFFIRM the Examiner's obviousness rejections of claims 1-3, 6-
14, and 17-20.
We REVERSE the Examiner's obviousness rejection of claims 4, 5,
15, and 16.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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