Ex Parte Ellingson et al

Patent Trial and Appeal Board

Sep 27, 2017

12648547 (P.T.A.B. Sep. 27, 2017)

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.
12/648,547 12/29/2009 Michael L. Ellingson P0035614.01/LG10126 4009
27581 7590 09/29/2017
Medtronic, Inc. (CRDM)
710 MEDTRONIC PARKWAY NE
MS: LC340 Legal Patents
MINNEAPOLIS, MN 55432-9924
EXAMINER
WEHRHEIM, LINDSEY GAIL
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
09/29/2017 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):
medtronic_crdm_docketing @ c ardinal-ip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL L. ELLINGSON, HYUN J. YOON,
PIOTR J. PRZYBYSZEWSKI, and PATRICK L. PARISH
Appeal 2015-006984
Application 12/648,547
Technology Center 3700
Before BRETT C. MARTIN, ANNETTE R. REIMERS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1—8, 11—17, 20-26, and 28—33. Claims 9, 10, 18, 19, and
27 were canceled during prosecution. Final Act. 2. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2015-006984
Application 12/648,547
THE INVENTION
Appellants’ claims are directed “generally to implantable medical
devices and, in particular, to the configuration of operating parameters of an
implantable medical device (IMD) based on a type of source of a disruptive
energy field to which the IMD is exposed.” Spec. 1,11. 8—10. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An implantable medical device comprising:
a memory to store operating parameters for a plurality of
exposure operating modes, wherein the plurality of exposure
operating modes includes a default exposure operating mode and
at least one operating mode that corresponds to a paliicular type
of magnetic resonance imaging (MRI) scanner; and
a processor configured to detect a condition indicative of
a presence of an MRI scanner, configure the implantable medical
device to operate in accordance with operating parameters of the
default exposure operating mode stored in the memory in
response to detecting the presence of the MRI scanner,
subsequently determine a type of MRI scanner in response to
detecting the condition, retrieve from the memory the operating
parameters of the one of the plurality of exposure operating
modes corresponding to the determined type of MRI scanner, and
configure the implantable medical device to operate in
accordance with the retrieved operating parameters.
The prior art relied upon by the Examiner in rejecting the claims on
REFERENCES
appeal is:
Brownlee
Kroll
Inman
US 4,091,818
US 2004/0088012 A1
US 2007/0021814 A1
May 30, 1978
May 6, 2004
Jan. 25, 2007
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Appeal 2015-006984
Application 12/648,547
REJECTIONS
The Examiner made the following rejections:
Claims 1—8, 11—17, 20-26, 28, 31, and 32 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Inman. Final Act. 3.
Claims 29 and 30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inman and Kroll. Id. at 7.
Claim 33 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inman and Brownlee. Id. at 8.
ANALYSIS
Appellants argue claims 1—8, 11—17, 20—26, 28, 31, and 32, which
includes all independent claims at issue, as a group. App. Br. 7. We select
claim 1 as representative, so all claims stand or fall with our disposition of
claim 1. Furthermore, because we find the issues relating to Inman in this
rejection dispositive to its application in the remaining rejections, all of the
rejections stand or fall with our disposition of claim 1.
The Examiner finds that Inman teaches the detection of a type of MRI
scanner and then adjusts the operation mode of the implantable medical
device according to this detection, but “does not explicitly disclose [that] the
method first configures the device to operate in a default exposure mode,
then subsequently determining the type of MRI scanner, then selecting a
second operating mode. Final. Act. 3^4. The Examiner additionally finds
that “Inman [discloses] an embodiment including a plurality of exposure
operating modes (e.g., par [0051]), including those corresponding to a 1.5 T
scanner and a 3.0 T scanner.” Id. at 4. The Examiner explains that because
Inman teaches multiple MRI parameter modes as well as “that the process of
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Appeal 2015-006984
Application 12/648,547
detection of coupled signal/energy and parameter adjustment is repeated (par
[0068])” is sufficient to teach the multiple detections and mode adjustments
found in claim 1. Ans. 6.
We agree with the Appellants, however, that while Inman may teach
multiple specific MRI parameter modes, there is no path to adjust from one
specific MRI parameter mode, such as 1.5 T, to another specific parameter
mode, such as 3.0 T. See Reply Br. 3; App. Br. 10-11. Furthermore, the
claims require not simply two detections of a specific MRI mode, such as
that utilized by the Examiner in a repetition of Inman’s teachings, but
detection of an MRI generally and then configuring a “default exposure
mode” to operate safely around all MRI machines. The claims next require
a second detection to determine the specific type of MRI machine and then
entering a different exposure mode specifically tailored to that type of MRI
scanner. The Examiner’s proposed repetition of the method taught in Inman
would not result in the kind of general detection/general configuration
followed by specific detection/specific configuration that is found in the
claims.
We further agree with Appellants that Inman “only does a single
determination of the type of coupled signal and only one modification to a
safe mode [from a normal operation mode] based on the determination” at
which point “the device either maintains operating in that same safe mode or
returns to the normal mode of operation.” App. Br. 11. While not explicitly
stated in the claims, we do agree that the claims essentially require three
modes of operation: “(1) first configuration before detection of MRI scanner,
(2) after detection of MRI scanner, the IMD is configured to a second
configuration (default exposure mode) and (3) after determination of the
type of MRI scanner, the IMD is configured to a third configuration.” Reply
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Appeal 2015-006984
Application 12/648,547
Br. 2—3. The Examiner asserts that “[t]he claim as currently worded does
not disclose what the default exposure mode is, so any action by the IMD
could be the default mode.” Ans. 6. This assertion ignores that both of the
modes are referred to as “exposure operating modes” so that they cannot be
any operational configuration by the IMD, but must be reconfigurations to a
safe mode based upon the presence of an MRI scanner, i.e., the device is
operating in a certain mode related to MRI exposure.
Furthermore, as noted above, even repetition of the steps in Inman
still does not result in the detection of the presence of an MRI scanner and
then MRI type, but would only result in twice detecting the type of two
different MRI scanners. The Examiner has not explained how Inman
teaches both the presence detection and the type detection that is explicit in
the claims and then the associated reconfiguration. Accordingly, we do not
sustain the rejection of claim 1. Because none of the other cited references
cures this deficiency, all of the rejections fall with our disposition of claim 1.
DECISION
For the above reasons, we REVERSE the Examiner’s decision to
reject claims 1—8, 11—17, 20-26, and 28—33.
REVERSED
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