Ex Parte Lips et al

Patent Trial and Appeal Board

Mar 28, 2016

13130369 (P.T.A.B. Mar. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/130,369 05/20/2011 Oliver Lips
24737 7590 03/30/2016
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
BRIARCLIFF MANOR, NY 10510
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.
2008P00700WOUS 7117
EXAMINER
MCCORMACK, THOMAS S
ART UNIT PAPER NUMBER
2683
NOTIFICATION DATE DELIVERY MODE
03/30/2016 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):
debbie.henn@philips.com
marianne.fox@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OLIVER LIPS, BERND DAVID, PAUL HAAKER, SASCHA
KRUEGER, STEFFEN WEISS, and DANIEL WIRTZ
Appeal2014-007602
Application 13/130,369
Technology Center 2600
Before CAROLYN D. THOMAS, JEFFREYS. SMITH, and
TERRENCE W. MCMILLIN, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-007602
Application 13/130,369
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse and enter new grounds of rejection.
Illustrative Claim
1. Device (100) comprising:
a first interface (102, 104, 106, 108; 102', 104')
connectable to a signal transmission/reception device (200)
configured to transmit and/or receive signals;
a second interface (110, 112) connectable to a proximal
side of a catheter (300) configured to communicate signals
between its proximal side and its distal side;
a first sensor ( 114) configured to sense a signal input via
said first interface; and
an adjustment unit (116; 116'; 116") configured to adjust
said signal sensed by said first sensor to compensate for a
resistance loss caused by a conductor (302, 304) of said catheter
and to output said adjusted signal via said second interface.
Prior Art
Stockburger
Mehra
Panescu
Zhu
us 4,629,873
us 5,018,522
us 6,049,732
US 2003/0060854 Al
WO 2008/032249 A2
Dec. 16, 1986
May 28, 1991
Apr. 11, 2000
Mar. 27, 2003
Mar. 20, 2008 Lips
Examiner's Rejections
Claims 1-7, 9, and 11-15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Panescu, Zhu, and Lips.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Panescu, Zhu, Lips, and Mehra.
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Appeal2014-007602
Application 13/130,369
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Panescu, Zhu, Lips, and Stockburger.
ANALYSIS
Claim 1 recites, inter alia, an adjustment unit configured to adjust said
signal sensed by said first sensor to compensate for a resistance loss caused
by a conductor of said catheter and to output said adjusted signal via said
second interface. The Examiner finds paragraph 14 of Zhu teaches an
adjustment unit configured to adjust said signal sensed by said first sensor to
compensate for a resistance loss caused by a conductor of said catheter.
Ans. 4. Appellants contend that Zhu teaches adjusting a pacing signal rate to
compensate for exertion level, but without regard to the resistance of the
load which receives the signal. Appeal Br. 10; Reply Br. 7.
We agree with Appellants that Zhu's adjustment unit, contrary to the
Examiner's finding, does not teach or suggest adjusting said signal sensed
by said first sensor to compensate for a resistance loss caused by a
conductor of said catheter, as required in claim 1. We do not sustain the
rejection of claim 1 under 35 U.S.C. § 103. Claims 2-15 either recite or
depend from a claim that recites a limitation similar to that found in claim 1
for which the rejection fails.
However, we find adjusting said signal sensed by said first sensor to
compensate for a resistance loss caused by a conductor of said catheter
would have been obvious to a person of ordinary skill in the art at the time
of invention based on the teachings of Lips, Zhu, and Sluijter1.
1 WO 97 /49453 Al, Dec. 31, 1997, cited in the International Search Report
mailed Feb. 25, 2010, for priority Application PCT/IB2009/055141.
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Appeal2014-007602
Application 13/130,369
Lips teaches replacing resistance wires of a typical medical catheter
with highly resistive wires 61, 62 to connect to catheter electrodes 63, 64
(Figures 2, 4, page 5, lines 15-29, and page 6, lines 21-33), thus requiring
high voltage in the case of a pacing method to achieve the appropriate
voltage and current at the catheter tip (page 6, lines 26-33). Lips also
teaches providing a current sensing unit for sensing a current signal from a
current source and transmitting the sensed signal to an external current
control unit (page 3, lines 29-32 and page 7, lines 10-12). Sluijter teaches
an amplifier to increase an input signal to power levels appropriate for
clinical use (Figure 6 and page 19, lines 12-16).
One of ordinary skill, faced with the need to increase the power of the
input signal of a typical pacer to compensate for the resistance loss caused
by the highly resistive wires of the catheter as taught by Lips, and with the
ability to sense an input signal and transmit the sensed signal to an external
current control unit as also taught by Lips, would use an amplifier, such as
the amplifier of Zhu or Sluijter, as the current control unit to yield the
predictable result of increasing the input signal to power levels appropriate
for clinical use as taught by Sluijter. Thus, the combined teachings of Lips,
Zhu, and Sluijter teach increasing the power of the sensed signal to
compensate for resistance loss so that the signal is appropriate for clinical
use.
Because the Examiner did not cite the input sensor of Lips, the need to
increase power to compensate for highly resistive wires as taught by Lips, or
the ability to amplify a signal for the benefit of providing a power level
appropriate for clinical use as taught by Sluijter, we modify the Examiner's
rejection for independent claims 1 and 14 to incorporate the teachings of
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Appeal2014-007602
Application 13/130,369
Lips and Sluijter, and label this as a new ground of rejection. We adopt the
Examiner's uncontested findings of fact as our own. We reject claims 1-7,
9, and 11-15 under 35 U.S.C. § 103(a) as being unpatentable over Panescu,
Zhu, Lips, and Sluijter. We reject claim 8 under 35 U.S.C. § 103(a) as being
unpatentable over Panescu, Zhu, Lips, Sluijter, and Mehra. We reject claim
10 under 35 U.S.C. § 103(a) as being unpatentable over Panescu, Zhu, Lips,
Sluijter, and Stockburger.
DECISION
The rejection of claims 1-7, 9, and 11-15 under 35 U.S.C. § 103(a) as
being unpatentable over Panescu, Zhu, and Lips is reversed.
The rejection of claim 8 under 35 U.S.C. § 103(a) as being
unpatentable over Panescu, Zhu, Lips, and Mehra is reversed.
The rejection of claim 10 under 35 U.S.C. § 103(a) as being
unpatentable over Panescu, Zhu, Lips, and Stockburger is reversed.
We enter the following new grounds of rejection against the claims
under 37 C.F.R. § 41.50 (b):
We reject claims 1-7, 9, and 11-15 under 35 U.S.C. § 103(a) as being
unpatentable over Panescu, Zhu, Lips, and Sluijter.
We reject claim 8 under 35 U.S.C. § 103(a) as being unpatentable
over Panescu, Zhu, Lips, Sluijter, and Mehra.
We reject claim 10 under 35 U.S.C. § 103(a) as being unpatentable
over Panescu, Zhu, Lips, Sluijter, and Stockburger.
Since we have entered a new ground of rejection against the claims,
our decision is not a final agency action.
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Appeal2014-007602
Application 13/130,369
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2011). Section 41.50(b) provides that "[a] new ground of
rejection ... shall not be considered final for judicial review."
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new Evidence relating to the
claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same 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)(l )(iv).
REVERSED
37 C.F.R. § 41.50(b)
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