Ex Parte Laske et al

Patent Trial and Appeal Board

Mar 24, 2016

12474645 (P.T.A.B. Mar. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/474,645 0512912009
27581 7590 03/28/2016
Medtronic, Inc. (CRDM)
710 MEDTRONIC PARKWAY NE
MS: LC340 Legal Patents
MINNEAPOLIS, MN 55432-9924
FIRST NAMED INVENTOR
Timothy G. Laske
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.
P0011218.00/LG10126 1966
EXAMINER
WU, TONGE
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
03/28/2016 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@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY G. LASKE, GONZALO MARTINEZ,
and MARKT. MARSHALL
Appeal2013-004737
Application 12/474,645
Technology Center 3700
Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 14--26, 35, and 36. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
Appeal2013-004737
Application 12/474,645
THE INVENTION
Appellants' invention relates to electrical leads in implantable medical
devices. Spec. i-f 1. Claim 14, reproduced below, is illustrative of the
subject matter on appeal.
14. A method of selectively sensing and pulsing electrical
signals using an implanted medical lead, the lead having an
elongated lead body with a distal end, a proximal end, a first
material capable of electrical pulsing and sensing, and a second
material capable of electrical pulsing and not sensing, the
method comprising:
sensing an electrical signal using the first material;
pulsing an electrical signal using the first material and the
second material.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Hoffmann
Martinez
Efimov
McVenes
Kroll
us 5,534,022
us 5,849,031
US 2006/0161206 Al
US 2008/0004670 Al
US 7,848,806 Bl
July 9, 1996
Dec. 15, 1998
July 20, 2006
Jan.3,2008
Dec. 7, 2010
The following rejections are before us for review:
1. Claims 14--20, and 35 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Mc Venes.
2. Claims 21 and 36 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mc V enes and Hoffman.
3. Claims 22-24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mc V enes and Kroll.
- 2 -
Appeal2013-004737
Application 12/474,645
4. Claim 25 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over McVenes, Kroll, and Efimov.
5. Claim 26 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mc V enes, Kroll, and Martinez.
OPINION
Anticipation by Mc Venes
Claim 14
The Examiner finds that Mc V enes discloses all of the limitations of
claim 1. Final Action 3. In particular, the Examiner finds that ring
electrode 7 4 in the Figure 5 embodiment of Mc Venes satisfies the limitation
in claim 14 directed to a second material that is capable of electrical pulsing
and not sensing. Id., Ans. 7.
Appellants traverse the rejection by arguing that McVenes' ring
electrode 7 4 neither pulses nor senses an electrical signal within the meaning
of claim 14. Appeal Br. 9.
In response, the Examiner states that the dielectric coating on
Mc Venes' ring electrode 7 4 helps direct the electrical signal through the
conductive tip electrode, because the dielectric coating blocks the pacing
signal from conducting through the ring electrode and thus, directs the
pacing signal to conduct through the tip electrode. Ans. 7. The Examiner
further states that the claim as written only requires "using" the first and
second materials and thus, does not recite conducting the pulsing current
"through" the first and second materials. Id.
In reply, Appellants point out that the second material in claim 14
must be capable of electrical pulsing and not sensing. Reply Br. 2.
Appellants argue that the Examiner's reliance on the dielectric coating of
- 3 -
Appeal2013-004737
Application 12/474,645
ring electrode 74 is improper, because the dielectric coating is either useful
for both pacing and sensing or is useful for neither. Id. at 3.
To anticipate a claim, a single prior art reference must expressly or
inherently disclose each claim limitation. Celeritas Techs., Ltd. v. Rockwell
Int'! Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998). Anticipation also requires
all of the elements to be "arranged as in the claim." Finisar Corp. v. Direct
Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008).
Claim 14 requires an electrical lead comprised of two materials, a first
material capable of electrical pulsing and sensing, and a second material
capable of electrical pulsing and not sensing. Claims App. Within this
context, claim 14 claims a method of pulsing an electrical signal using the
first and second materials, and sensing, but not pulsing, an electrical signal
using the first material. Id. The Examiner relies on paragraph 28 of
Mc Venes as disclosing the "second material" of claim 14 that is capable of
pulsing but not sensing. Final Action 3. The Examiner also relies on
paragraphs 35 and 36 of McVenes as disclosing sensing and pulsing. Id.
Paragraph 28 of Mc Venes explains that ring electrode 7 4 includes a
conductive electrode base and a conformal dielectric coating applied
thereover. McVenes ,-r 28. The ring electrode serves as an RF shunt
electrode for shunting current induced on conductor 7 6 during exposure to
high frequency electromagnetic interference. Id. at ,-r 29. Paragraphs 35 and
36 ofMcVenes describe an embodiment depicted in Figure 8 that includes a
tip electrode 134 and a ring electrode 128 for carrying out sensing and
stimulation functions. Mc V enes i-fi-1 3 5, 3 6. It further discloses that any of
the electrodes of Figure 8 may be formed with a conformal coating using
ALD. However, the Examiner's finding that McVenes discloses a second
- 4 -
Appeal2013-004737
Application 12/474,645
material that pulses an electrical signal, but does not sense an electrical
signal, is not supported by the record.
For this reason, we do not sustain the Examiner's anticipation
rejection of claim 14.
Claims 15-20
Claims 15-20 depend, directly or indirectly from claim 14. Claims
App. The rejection of these claims suffers from the same infirmity that we
have identified above with respect to claim 1. For the same reasons
articulated above with respect to claim 1, we do not sustain the anticipation
rejection of claims 15-20.
Claim 35
Claim 35 is an independent claim. Claims App. Claim 35 presents
essentially the same issue as discussed above with respect to claim 14
regarding a second material that is capable of electrical pulsing, but not
sensing, an electrical signal. For the same reasons discussed above with
respect to claim 14, we do not sustain the anticipation rejection of claim 35.
Unpatentability Rejections over
Combinations Based on Mc Venes
All of the Examiner's unpatentability rejections are based on using
Mc Venes as the primary reference. Final Action 3---6. These rejections all
suffer from the same deficiency that we have noted with respect to the
anticipation rejection over McVenes, which deficiency is not cured by the
Examiner's reliance on various secondary references. For this reason, we do
not sustain the unpatentability rejection of claims 21-26 and 36.
- 5 -
Appeal2013-004737
Application 12/474,645
DECISION
The decision of the Examiner to reject claims 14--26, 35, and 36 is
REVERSED.
REVERSED
- 6 -