Ex Parte Min

Patent Trial and Appeal Board

Mar 22, 2016

12639881 (P.T.A.B. Mar. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/639,881 12/16/2009
36802 7590 03/24/2016
PACESETTER, INC
15900 VALLEY VIEW COURT
SYLMAR, CA 91392-9221
FIRST NAMED INVENTOR
XiaoyiMin
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.
A09Pl034US01 7653
EXAMINER
FAIRCHILD, MALLIKA DIPAYAN
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
03/24/2016 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):
Patent.CRMDSylmar@sjm.com
lcancino-zepeda@sjm.com
epineiro@sjm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIAOYI MIN
Appeal2013-008401
Application 12/639,881
Technology Center 3700
Before NEALE. ABRAMS, THOMAS F. SMEGAL, and
MICHAEL L. WOODS, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
Xiaoyi Min (Appellant) seeks our review under 35 U.S.C. § 134 from
the Examiner's decision rejecting claims 1, 2, and 11-14. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal2013-008401
Application 12/639,881
THE INVENTION
The claimed invention is directed to a method for controlling multi-
site ventricular pacing for use by an implantable cardiac rhythm
management device, and to systems for implementing this method.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for controlling multi-site ventricular pacing for use
by an implantable cardiac rhythm management device equipped
with a multi-pole ventricular lead having a plurality of
electrodes, the method comprising:
determining an interventricular conduction time delay
value ( £ 1) for each of the plurality of electrodes;
determining preliminary multi-site interventricular pacing
delays (VVT) for the plurality of electrodes of the multi-pole lead
based, at least in part, on the multi-site interventricular
conduction time delay values ( £ 1) determined for the electrodes;
determining multi-site interelectrode pacing delays (IVV)
for the plurality of electrodes of the multi-pole lead based on the
preliminary interventricular pacing delays (VVT);
determining an order by which the electrodes of the multi-
pole lead are to be used to deliver a set of multi-site pacing
pulses, with the order determined based on the interelectrode
pacing time delays (IW); and
delivering multi-site ventricular pacing by delivering a set
of pulses using the electrodes of the multi-pole lead in the
determined order.
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Appeal2013-008401
Application 12/639,881
THE PRIOR ART
The Examiner relied upon the following as evidence of
unpatentability:
Ding
Hine
US 2002/0177879 Al
US 2005/0090870 Al
THE REJECTION
Nov. 28, 2002
Apr. 28, 2005
Claims 1, 2, and 11-14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ding and Hine. 1
OPINION
The Examiner found all of the subject matter recited in the method set
forth in Appellant's claim 1 to be disclosed in Ding, except that
Ding et al do not disclose that the system is configured to
determine multi-site interelectrode pacing delays (IVV) for the
plurality of electrodes of the multi-pole lead based the
preliminary interventricular pacing delays (VVT) and determine
an order of applying pacing pulses based on the interelectrode
pacing time delay (IVV).
Final Act. 6.
However, the Examiner finds that
Hine et al disclose a system and method for controlling
biventricular pacing therapy for use by an implantable cardiac
rhythm management device ( e.g. 14, Fig. 1) equipped with a
multi-pole ventricular lead ( e.g. 52, Fig. I) having a plurality of
electrodes (e.g. 1-5, Fig.I, [0064]). The system is configured to
determine multi-site interelectrode pacing delays (IVV) for the
plurality of electrodes of the multi-pole lead and to determine an
1 The Examiner has indicated that claims 3-10 are objected to as being
dependent upon a rejected base claim, but would be allowable if rewritten in
independent form. Final Act. 7.
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Appeal2013-008401
Application 12/639,881
Id.
order by which the electrodes of the multi-pole lead are to be
used to deliver a set of multi- site pacing pulses, with the order
determined based on the interelectrode pacing time delays (IVV)
(e.g. Fig.15).
Based upon these findings, the Examiner concludes that it would have
been obvious "to modify the invention of Ding et al with the teachings of
Hine et al in order to provide the predictable results of improving the
performance of the system by selecting optimal pacing locations." Id.
Among the arguments presented by Appellant, in response to the
positions set out by the Examiner in the Final Action, are the following:
Hine does not teach or suggest determining the interelectrode
pacing delays based on interventricular pacing delays, which in
tum are based on the multi-site interventricular conduction
time delay values; rather Hine determines the pacing times by
performing the various pacing tests and selecting the one that
achieves the desired cardiac output.
One of ordinary skill in the art would not be motivated to
combine these references, since Ding teaches selecting a single
site for delivering left ventricular stimulation, and Hine teaches
multi-site pacing. Moreover, even if one were to combine the
references, neither reference teaches or suggests the limitation
"determining multisite interelectrode pacing delays (IW) for the
plurality of electrodes of the multi-pole lead based on the
preliminary interventricular pacing delays (VVT).
In addition, the Examiner fails to point out exactly how
one of ordinary skill would be motivated to modifY Ding based
on the teachings of Hine. Ding teaches selecting a single
electrode based on intrinsic activation times, whereas Hine
teaches testing various multi-site pacing configurations,
monitoring the resulting cardiac output results, and selecting the
electrode configuration that achieves the desired cardiac output.
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Appeal2013-008401
Application 12/639,881
As is established by MPEP §§ 2142 and 2143, the Examiner
must do more than point to the elements of Appellant's claim in
various references.
Id. at 8 (emphasis in italics added).
Continuing the theme of the passage recited immediately above, Appellant
emphasizes that "[a]ccording to MPEP §§ 2142 and 2143, an examiner
seeking to establish a prima facie case of obviousness must clearly articulate
reasons with rational, factual underpinnings to support the conclusion of
obviousness." Id. at 9.
A prima facie case of obviousness is established when the teachings
from the prior art itself would appear to have established the claimed subject
matter to a person of ordinary skill in the art. In re Rinehart, 531 F.2d 1048,
1051(CCPA1976). As explained in MPEP § 2142:
The key to supporting any rejection under 35 U.S.C. 103 is
the clear articulation of the reason(s) why the claimed invention
would have been obvious. The Supreme Court in KSR Int'! Co.
v. Telej1ex Inc., 550 U.S. 538, 418, 82 USPQ2d 1385, 1396
(2007) noted that the analysis supporting a rejection under 35
U.S.C. 103 should be made explicit. The Federal Circuit has
stated that "rejections on obviousness cannot be sustained with
mere conc1usory statements; instead~ there must be some
miiculated reasoning with some rational underpinning to support
the legal conclusion of obviousness.'' Jn re Kahn, 441 F ,3d 977,
QSR '"' 0 u·-='pc· ) ~ 11"9 11" , .F, d c-,. JOC) ---\ i KPJ) - ~o __ 0~ lo ',:) )~Ci -~ , __ 16 ( e'. -"lL ~ 01; see a so ,) \, ))
LL S. at 418, 82 USPQ2d at 1396 (quoting Federal Circuit
statement with approval),
The rejection does not meet these requirements. On pages 5-8 of the
Answer, the Examiner has taken issue with the arguments raised by
Appellant. However, the Examiner has not explained precisely how the
Ding system would be modified in view of the teachings of Hine, in order to
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Appeal2013-008401
Application 12/639,881
render obvious the subject matter recited in Appellant's independent claims
1, 13, and 14. Nor has the Examiner explained why one of ordinary skill in
the art would have been motivated to combine the teachings of the two
references in such a manner as to meet the terms of Appellant's claims, or
provided argument in support of the conclusion set forth on page 8 of the
Answer that the resulting method and apparatus would "provide the
predictable results of improving the performance of the system by selecting
optimal pacing locations and pacing intervals to maximize safe, efficacious
and continuous therapy delivery to the patient."
Thus, a prima facie case of obviousness has not been established, and
this rejection is not sustained.
DECISION
The rejection of claims 1, 2, and 11-14 is not sustained.
The decision of the Examiner is reversed.
REVERSED
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