Ex Parte Iaizzo et al

Patent Trial and Appeal Board

Oct 20, 2017

10876301 (P.T.A.B. Oct. 20, 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.
10/876,301 06/24/2004 Paul A. Iaizzo P0008837.02/LG10126 1955
27581 7590
Medtronic, Inc. (CRDM)
710 MEDTRONIC PARKWAY NE
MS: LC340 Legal Patents
MINNEAPOLIS, MN 55432-9924
EXAMINER
BERHANU, ETSUB D
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
10/24/2017 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 PAUL A. IAIZZO and TIMOTHY G. LASKE
Appeal 2016-0007571
Application 10/876,3012
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of the Decision entered August 11, 2017
(Decision) reversing the pending rejections under 35 U.S.C. § 103(a) and
entering new grounds of rejection under 35 U.S.C. § 103(a).
We DENY the requested relief.
1 This Appeal is related to Appeal 2010-010530, Application 10/876,301,
Decision affirming-in-part entered February 24, 2012.
2 Appellants identify the real party in interest as “Medtronic, Inc.” (App. Br.
2).
Appeal 2016-000757
Application 10/876,301
ANALYSIS
Before we address Appellants’ arguments, we provide the underlying
reasoning of our earlier Decision. As the Decision explains, “Examiner
relied on common sense or knowledge to infer that a structural limitation
required by Appellants’ claimed invention was necessarily present in Orth[3]
(Ans. 16 and 18)” (Decision 8). Appellants, however, contended that
‘“[tjhere is no reason to believe that’ a person of ordinary skill in this art
would have understood Orth to disclose or suggest placing a lead for pacing
in the lumen of one of Orth’s catheters ...” (id. at 9 (alteration original)
(citing App. Br. 8 and 9-10)). “Examiner[, therefore,] directed attention to
column 1, lines 10-16 and 30-34 of Brenner[4] to disclose the delivery of
pacing leads through the lumen of a catheter to a desired location within the
body (see Ans. 19; FF 2—3)” (Decision 9-10). “Examiner [made] clear,
however, that Brenner [was] not relied upon as evidence to support a finding
that a person of ordinary skill in this art would have found Orth’s catheter
set to include a lumen for the deployment of pacing or ECG sensing leads
(see Ans. 20 . . .)” (Decision 10). In response,
Appellants contended], in both their Brief and Reply Brief,
that, absent Brenner’s disclosure of a lumen through which
pacing leads may be passed, Examiner failed to establish an
evidentiary basis on this record to support a conclusion that a
person of ordinary skill in this art would have understood that
pacing or ECG sensing leads could have been delivered through
the lumen of a catheter within the scope of Orth’s catheter set
(see generally App. Br. 10-11; Reply Br. 3—5).
(Decision 10.)
3 Orth, US 5,423,323, issued June 13, 1995.
4 Brenner, US 6,497,681 Bl, issued Dec. 24, 2002.
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Appeal 2016-000757
Application 10/876,301
“Thus, when [the] record [was] viewed as a whole, we [found] that the
rejections presented by Examiner for our review fail[ed] to support a
conclusion that Orth implicitly disclose[d] a delivery lumen capable of
delivering a pacing or ECG sensing lead” (id.).
To resolve the evidentiary deficiency and controversy on th[e]
record, we reverse[d] the rejections of record and restate[d]
each of Examiner’s rejections as new grounds of rejection in
order to add and/or additionally rely upon Brenner, as an
evidentiary disclosure, to support Examiner’s finding that a
person of ordinary skill in this art would have understood Orth
to disclose “a lead delivery lumen 22/44 through which [pacing
or ECG sensing] lead[s] may be deployed” (see Ans. 2; FF 1—
3).
(Decision 10-11.) More specifically, we found that
Brenner clearly demonstrates that it was known in the art to
position pacing leads through a lumen of a sheath, or catheter,
to a desired location within the patient’s body (FF 3).
Therefore, we [found] no error in Examiner’s rationale that, at
the time of Appellants’ claimed invention, a person of ordinary
skill in this art would have found it prima facie obvious to place
the pacing or ECG sensing leads of Orth’s catheter set through
lumen 22 of Orth’s catheter set as evidenced by Brenner. Thus,
absent evidence to the contrary and notwithstanding
Appellants’ contention to the contrary, as Examiner explained,
Orth necessarily discloses a “delivery lumen 22 capable of
delivering a pacing lead” (see Ans. 16 and 18).
(Decision 11.) “But for the foregoing modification to Examiner’s rejections,
we [found] no error in, and incorporate[d] by reference, the factual findings,
reasoning, and conclusion of obviousness presented in Examiner’s Answer,
which [were] otherwise not contested by Appellants (see id. at 2—16)”
(Decision 11).
As discussed above, the reason for reversing the rejections of record
and restating each rejection as a new ground of rejection was clearly set
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Appeal 2016-000757
Application 10/876,301
forth in the Decision (Decision 10-11). Thus, we are not persuaded by
Appellants’ contention that “the Board’s position is unclear and seemingly
contradictory” (Req. Reh’g 2; see id. (“the Board’s new ground of rejection,
as set forth, fails to meet the requirements of specificity and clarity
necessary for a proper rejection under Section 103”); see also id. at 3).
For the reasons set forth above, we are not persuaded by Appellants’
contentions regarding a modification of Orth’s device “to add a lumen
therein capable of delivering a pacing lead,” which is not consistent with the
Decision (see Req. Reh’g 2; see also id. at 3 (“the Board did not explain why
it would be obvious to modify the elongated body of the Orth device to meet
the claims or specifically how to so modify it”); cf. Decision 10—11). In this
regard, we are not persuaded by Appellants’ contention that “the Board’s
rationale for rejection requires that the ‘elongated body’ of the Orth catheter
itself is to be modified to include a lead delivery lumen” (Req. Reh’g 3; cf.
Decision 11). Notwithstanding Appellants’ contention to the contrary, as
evidenced by Brenner, “Orth necessarily discloses a ‘delivery lumen 22
capable of delivering a pacing lead,”’ thus, the rationale set forth in the
Decision does not require a modification to add an additional lumen to
Orth’s device (Decision 11; cf. Req. Reh’g 3^4).
The Decision made clear that arguments not made in Appellants’
briefings were waived (Decision 11). Appellants now assert that they are
“entitled to advance any new arguments appropriate to counter the new
rejection[s] of the Board, based upon the modification of the elongated body
of the Orth catheter” (Req. Re’g 4—5). As discussed above, the new grounds
of rejection do not modify the elongated body of Orth’s catheter set. To the
contrary, the new grounds of rejection make clear that a person of ordinary
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Appeal 2016-000757
Application 10/876,301
skill in this art would have found it prima facie obvious to pass or otherwise
deliver a lead through lumen 22 of Orth’s existing catheter set (Decision 10—
11). Thus, notwithstanding Appellants’ contention to the contrary,
Appellants’ contentions regarding a modification of Orth’s device are
neither consistent with the new grounds of rejection set forth in the Decision,
persuasive, nor timely presented for our review.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REHEARING DENIED
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