Ex Parte Goetz et al

Board of Patent Appeals and Interferences

May 7, 2012

11590741 (B.P.A.I. May. 7, 2012)

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.
11/590,741 10/31/2006 Steven M. Goetz 151P24413USU1 5698
54228 7590 05/07/2012
IPLM GROUP, P.A.
POST OFFICE BOX 18455
MINNEAPOLIS, MN 55418
EXAMINER
EL-KAISSI, HIBA CARINE
ART UNIT PAPER NUMBER
3762
MAIL DATE DELIVERY MODE
05/07/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte STEVEN M. GOETZ, TODD V. SMITH,
NATHAN A. TORGERSON, and WARREN W. BALL
__________

Appeal 2010-009790
Application 11/590,741
Technology Center 3700
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and
FRANCISCO C. PRATS, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2010-009790
Application 11/590,741

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STATEMENT OF CASE
1. A controller for an implantable medical device having a plurality of
electrodes, said implantable medical device capable of delivering therapeutic
stimulation to a patient, comprising:
a control module;
a user interface operatively coupled to said control module, said user
interface configured to provide control of said control module by a user
input and displaying a prescriptive analysis; and
an electrode interface operatively coupled between said plurality of
electrodes and said control module;
said control module using said electrode interface to obtain a plurality
of measurements of impedance values for a plurality of selected sets of
individual ones of said plurality of electrodes;
said control module determining said prescriptive analysis of
operational functionality of at least one of said plurality of electrodes by
comparing said plurality of measurements of impedance values of said
selected sets of individual ones of said plurality of electrodes to a range;
wherein said prescriptive analysis identifies a possible cause of at
least one of said plurality of measurements of impedance values of said
selected sets of individual ones of said plurality of electrodes being outside
of said range; and
wherein said prescriptive analysis comprises a recommended action to
at least in part rectify said at least one of said plurality of measurements of
impedance values that is outside of said range.

11. A controller as in claim 1 wherein said range comprises a range
based, at least in part, on a statistical relationship among values of said
plurality of measurements and on a deviation from said statistical
relationship.

Cited References

Sasmor et al. US 4,825,869 May 2, 1989
Hafelfinger et al. US 5,003,975 Apr. 2, 1991
Schuelke et al. US 5,755,742 May 26, 1998
Jorgenson et al. US 6,721,600 B2 Apr. 13, 2004
Appeal 2010-009790
Application 11/590,741

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Grounds of Rejection
Claims 1, 4-10, 14-16, 19-22, and 24-45 are rejected under 35 U.S.C.
§ 103(a) over Hafelfinger in view of Schuelke and Sasmor.
Claims 11-13 and 26 are rejected under 35 U.S.C. § 103(a) over
Hafelfinger in view of Schuelke, Sasmor and Jorgenson.

FINDINGS OF FACT
The Examiner‟s findings of fact are set forth in the Answer at pages 4-
10.

Discussion
ISSUE
The Examiner concludes that Hafelfinger teaches each element
claimed except a user interface configured to provide control of the control
module by a user input and display a prescriptive analysis, and a prescriptive
analysis which comprises a recommended action to at least in part rectify
said at least one of said plurality of measurements of impedance values that
is outside of said range. (Ans. 5; Claim 1.) The Examiner relies on
Schuelke for the disclosure of a user interface operatively coupled to a
pacemaker control module (Ans. 6) and Sasmor for the disclosure of a
“prescriptive analysis comprises a recommended action to at least in part
rectify said at least one of said plurality of measurements of impedance
values that is outside of said range.” (Ans. 7; Claim 1.)
Appellants argue that Sasmor “alludes to „clinically acceptable actions
to correct problems,‟” but “merely reminds the user to look at something,
not recommend an action to rectify a problem.” Appellants contend that
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Application 11/590,741

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Sasmor “discloses nothing more than a recommendation to „examine‟ a lead,
which has nothing to do with rectifying a problem with a lead.” (App. Br.
16; Reply Br. 7-8.) Thus, Appellants argue that the combination of
references does not teach each limitation claimed.
The dispositive issue is: Does the cited prior art suggest a user
interface with a control module configured to provide a “prescriptive
analysis compris[ing] a recommended action to at least in part rectify said at
least one of said plurality of measurements of impedance values that is
outside of said range,” as claimed?

PRINCIPLES OF LAW
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
“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’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).

Appeal 2010-009790
Application 11/590,741

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ANALYSIS
We agree with the Examiner‟s fact finding, statement of the rejection
and responses to Appellants‟ arguments as set forth in the Answer. We find
that the Examiner has provided evidence which supports a prima facie case
of obviousness. We provide the following additional comment.
Appellants argue that Sasmor “alludes to „clinically acceptable
actions to correct problems,‟” but “merely reminds the user to look at
something, not recommend an action to rectify a problem.” Appellants
contend that Sasmor “discloses nothing more than a recommendation to
„examine‟ a lead, which has nothing to do with rectifying a problem with a
lead.” (App. Br. 16; Reply Br. 7-8.) We are not persuaded by Appellants‟
arguments. We agree with the Examiner that Sasmor, col. 1, ll. 59-63
discloses the use of a clinically derived knowledge base plus patient and
pacemaker information to recommend specific corrective actions that could
be taken to rectify problems that have been identified. (Ans. 12.) These
actions are indicated to include “specific actions (such as reprogramming the
pacemaker) and diagnostic procedures (such as fluoroscopic examination of
the lead). The recommendations are based not only on the observed
problem, but also on stored information about the pacemaker and the
patient.” (Sasmor, col. 16, ll. 1-18.) Once the causes of the pacemaker
problems have been identified, possible corrective actions can be identified.
(Col. 15, ll. 65-67.) Thus Sasmor discloses a prescriptive analysis which
comprises a recommended action. Schuelke is relied on by the Examiner for
the disclosure of a prescriptive analysis for impedance values outside of the
desired range and for the user interface for a pacemaker operatively
connected to a control module. (Ans. 6.) The Examiner has provided a
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Application 11/590,741

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reasonable basis for believing that claimed elements are disclosed in the
prior art, and Appellants do not provide convincing rebuttal evidence.
The above evidence addresses the dispositive issue, and we affirm
both rejections.

CONCLUSION OF LAW
The cited prior art suggests a user interface with a control module
configured to provide a “prescriptive analysis compris[ing] a recommended
action to at least in part rectify said at least one of said plurality of
measurements of impedance values that is outside of said range,” as claimed.
The rejections are affirmed for the reasons of record.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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