Ex Parte Irani et alDownload PDFPatent Trial and Appeal BoardDec 17, 201812293218 (P.T.A.B. Dec. 17, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 12/293,218 122085 7590 Shartsis Friese LLP One Maritime Plaza 18th floor FILING DATE 03/10/2009 12/19/2018 San Francisco, CA 94111 FIRST NAMED INVENTOR Afraaz Irani 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. 9275.10102 8657 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): patents@sflaw.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AFRAAZ IRANI, MARK BIANCO, DAVID TRAN, PETER DANIEL DEYOUNG, MELANIE LISA ROMOLA WYLD, and TONY HANSHENG LI Appeal2018-000109 1 Application 12/293,2182 Technology Center 3700 Before KENNETH G. SCHOPPER, AMEE A. SHAH, and MATTHEWS. MEYERS, Administrative Patent Judges. SCHOPPER, Administrative Patent Judge. DECISION ON APPEAL 1 Our decision references the Appeal Brief filed Jan. 2, 2017 ("Br."), the Examiner's Answer mailed July 19, 2017 ("Ans."), and the Final Office Action mailed June 3, 2016 ("Final Act."). 2 According to Appellants, the real party in interest is "ENDURANCE RHYTHM, INC." Br. 3. Appeal2018-000109 Application 12/293 ,218 This is an appeal under 35 U.S.C. § 134 from the Examiner's Final rejection of claims 1-14, 16, 17, 19, and 21-24. 3 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND According to Appellants, "[t]he invention provides devices, systems, methods and kits for generating, charging and storing electrical energy that are suitable for use with implanted medical devices, such as pacemakers and defibrillators." Spec. ,r 20. CLAIMS Claims 1, 1 7, and 19 are the independent claims on appeal. Claim 1 is illustrative of the appealed claims and recites: 1. A generator comprising: a magnet and a conductor, the magnet and the conductor configured to be continuously moveable without dampening to conserve kinetic energy in relation to each other forming an induction electrical generator wherein the generator continuously produces an average power output between 40 µ W and 1000 µ W in response to a heartbeat wherein the generator is configured to be positioned at a distal end of a catheter lead and electrically connected to an implanted medical device to provide continuous and automatic charging of the medical device, wherein the catheter lead is configured to be affixed at the distal end to a heart wall of a patient. Br. 13. 3 We consider the omission of claim 24 from Appendix A of the Appeal Brief inadvertent as this claim is addressed in the body of the brief and has not been cancelled. 2 Appeal2018-000109 Application 12/293 ,218 REJECTIONS 1. The Examiner rejects claims 1, 2, 5-8, 10-13,4 19, 21, 22, and 24 under 35 U.S.C. § I03(a) as unpatentable over Johnston, 5 in view ofHolzer, 6 and White. 7 2. The Examiner rejects claims 3, 4, 17, and 23 under 35 U.S.C. § I03(a) as unpatentable over Johnston in view of Holzer, White, and Bednyak. 8 3. The Examiner rejects claim 9 under 35 U.S.C. § I03(a) as unpatentable over Johnston in view of Holzer, White, and Navarro. 9 4. The Examiner rejects claims 14 and 16 under 35 U.S.C. § I03(a) as unpatentable over Johnston in view of Holzer, White, and Harris. 10 DISCUSSION With respect to the rejections of each of the independent claims, Appellants rely on the same arguments. See Br. 7-12. Thus, we discuss claim 1 below, and our analysis is equally applicable to independent claims 17 and 19. 4 Although the Examiner lists claims 14 and 16 in the heading for this rejection, the body of the rejection does not address these claims. Rather, the Examiner addresses these claims in a subsequent rejection, as listed below. 5 Johnston et al., US 5,941,904; iss. Aug. 24, 1999 (hereinafter "Johnston"). 6 Holzer, US 2005/0256549 Al; pub. Nov. 17, 2005. 7 White et al., US 2006/0217776 Al; pub. Sept. 28, 2006 (hereinafter "White"). 8 Bednyak, US 2004/0222637 Al; pub. Nov. 11, 2004. 9 Navarro et al., US 2005/0273170 Al; pub. Dec. 8, 2005 (hereafter "Navarro"). 10 Harris et al., US 2008/0021341 Al; pub. Jan. 24, 2008 (hereinafter "Harris"). 3 Appeal2018-000109 Application 12/293 ,218 With respect to claim 1, the Examiner finds that Johnston discloses a generator and lead including a magnet and conductor that act as a kinetic electrical generator, which is fixed to a distal portion of a catheter lead coupled to an implantable medical device ("IMD"). Final Act. 3 ( citing Johnston Fig. 2, accelerometer 100). The Examiner finds that "the magnet would be exposed to acceleration on a continuous basis and therefore provide continuous voltage generation" because of its proximity to the heart wall, which is continuously moving as the heart beats. Id. The Examiner also finds that Johnston specifically describes, in a separate embodiment, "the use of the accelerometer as a power source" when "coupled to a power conditioner circuit to convert the voltage into a useable form for storage in an IMD." Id. The Examiner concludes that it would have been obvious to provide continuous and automatic charging of the IMD based on these disclosures. Id. at 3--4. The Examiner acknowledges that Johnston "does not explicitly disclose that the configuration of the device is such that the magnet and conductor are configured to be continuously moveable without dampening to conserve kinetic energy in relation to each other." Id. at 4. However, the Examiner finds that Holzer discloses providing "a microgenerator that includes a magnet 1130 and conductor 1110 that move relative to one another in order to produce continuous electricity ... in conductor 1110 where the compartment experiences movement from the heart." Id. ( citing Holzer ,r,r 164, 191). The Examiner concludes that it would have been obvious to incorporate these features into Johnston's device. Id. at 4--5. Finally, the Examiner concludes that, based on the teachings of White, it 4 Appeal2018-000109 Application 12/293 ,218 would have been obvious for the device to produce the power output required by the claim. Id. at 5. We agree with and adopt the Examiner's findings and conclusions with respect to claim 1. See Final Act. 2-5; see also Ans. 2-7. As discussed below, we are not persuaded of error by Appellants' arguments. Appellants argue that "Johnston does not teach or suggest a microgenerator. Johnston teaches an accelerometer which may transiently produce energy as a byproduct of acceleration." Br. 7. We disagree for the reasons provided by the Examiner. See, e.g., Ans. 4--5. In particular, Johnston specifically describes that the accelerometer 100 generates a voltage in response to acceleration and that the output voltage may be "large enough ... to provide useful electrical power to directly operate at least some of the pacemaker's electronics." Johnston, col. 9, 11. 10-17. Johnston further discloses a specific embodiment in which the power provided by the accelerometer is stored such that it "may be used to operate some of the pacemakers electronics, such as refreshing dynamic random access memory." Id. at col. 9, 11. 17-30. Although we do not make a specific finding regarding the appropriate construction of the term "generator" as claimed, we find that Johnston's discloses, as described above, a generator at least under the definitions set forth by Appellants, i.e., Johnson teaches that the accelerometer converts mechanical energy into electrical energy. See Br. 9. Appellants also argue that "Johnston does not teach continuous generation of energy created by a generator positioned distally within a tip of a cardiac lead." Br. 8. In support, Appellants point to a portion of Johnston's disclosure, which indicates that Johnston's accelerometer "forces 5 Appeal2018-000109 Application 12/293 ,218 a moveable magnet to its center position after acceleration ceases," and Appellants argue that Johnston discloses periods of rest in which energy generation would not be continuous. Id. (citing Johnston, col 5, 11. 1-14). We are not persuaded of error. Although Appellants point to one statement in Johnston indicating that the accelerometer is not always in motion, Appellants do not address the full scope of the rejection before us. As indicated above, the rejection relies on a combination of Johnston's disclosures to conclude that it would have been obvious to provide continuous and automatic charging of an IMD when it is coupled to the heart. Final Act. 3--4; see also Ans. 5---6. Further, we agree with the Examiner that it was known in the art that the heart provides a continuous source of motion from which energy may be generated. See Ans. 6. In particular, this finding is supported by the Examiner's findings with respect to Holzer, which discloses that it was known to provide a magnet and conductor to produce continuous electricity in relation to the movement of the heart. See Final Act. 4; see also Holzer ,r,r 164, 191. Thus, we are unpersuaded of error because Appellants' argument fails to address adequately the Examiner's conclusion that it would have been obvious to provide continuous and automatic charging of the IMD in response to the heartbeat. Based on the foregoing, we are not persuaded of error in the rejection of claim 1. For the same reasons, we are not persuaded of error in the rejections of independent claims 17 and 19, for which Appellants rely on the same arguments. Accordingly, we sustain the rejections of claims 1, 17, and 19. We also sustain the rejections of dependent claims 2-14, 16, and 21-24, for which Appellants do not provide separate arguments. 6 Appeal2018-000109 Application 12/293 ,218 CONCLUSION We AFFIRM the rejections of claims 1-14, 16, 17, 19, and 21-24. 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 7 Copy with citationCopy as parenthetical citation