Ex Parte Perschbacher et al

Patent Trial and Appeal Board

Jul 13, 2016

12277101 (P.T.A.B. Jul. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/277, 101 11124/2008 David L. Perschbacher
45458 7590 07115/2016
SCHWEGMAN LUNDBERG & WOESSNER/BSC
POBOX2938
MINNEAPOLIS, MN 55402
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.
279.F92US1 5391
EXAMINER
LEVICKY, WILLIAM J
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
07/15/2016 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):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID L. PERSCHBACHER,
JAMES 0. GILKERSON, and RON A. BALCZEWSKI
Appeal2014-007991
Application 12/277,101
Technology Center 3700
Before LYNNE H. BROWNE, JILL D. HILL, and LISA M. GUIJT,
Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David L. Perschbacher et al. (Appellants) appeal under 35 U.S.C.
§ 134 from the rejection of claims 1, 4--8, 10-13, 16, and 17 under 35
U.S.C. § 103(a) as unpatentable over Kim (US 2005/0192506 Al, pub. Sept.
1, 2005) and Blow (US 6,324,425 Bl, iss. Nov. 27, 2001). 1 Claims 2, 3, 9,
14, 15, and 18-23 are canceled. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 Although the Examiner provides separate statements of the grounds of
rejection for claims 1, 4, 5, 7, 8, 10-13, 16, and 17, and for claim 6, these
claims are all subject to the same ground of rejection (i.e., unpatentable over
the combined teachings of Kim and Blow).
Appeal2014-007991
Application 12/277,101
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system comprising:
a pulse generator including a can electrode; and
a lead couplable to the pulse generator, the lead including
a distal coil electrode and a proximal coil electrode, wherein
both of the coil electrodes are electrically uncoupled from the
can electrode such that a first unipolar sensing vector is
provided between the distal coil electrode and the can electrode
and a second unipolar sensing vector is provided between the
proximal coil electrode and the can electrode.
DISCUSSION
Appellants argue claims 1, 4--8, 10-13, 16, and 17 together. See
Appeal Br. 8-10; see also Reply Br. 2--4. We select independent claim 1 as
the illustrative claim, and claims 4--8, 10-13, 16, and 17, stand or fall with
claim 1.
The Examiner finds that Kim discloses all of the limitations of claim 1
except for a second unipolar sensing vector provided between the proximal
coil electrode and the can electrode. Final Act. 3. The Examiner further
finds that "Blow teaches that it is known in the pacing/sensing art to select
between known unipolar and bipolar electrode sensing combinations
including an atrial unipolar signal (proximal and can electrode sensing)." Id.
(citing Blow 6: 16-36). Based on these findings, the Examiner determines
that it would have been obvious "to modify the system as taught by Kim
with selecting the SVC [proximal] coil 116 and can electrode for a sensing
vector since such a modification would provide the predictable results of
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Appeal2014-007991
Application 12/277,101
providing reliable sensing options for facilitating sensing and therapy
output." Id.
Appellants argue that the combination of Kim and Blow would not
result in the claimed second unipolar sensing vector. Appeal Br. 8-9; see
also Reply Br. 3. In particular, Appellants point out that Blow is concerned
with multi-site pacing (Appeal Br. 8) and assert that "while Blow discuss[ es]
that the sensing/pacing electrodes can be used in various desired manners,
the Blow reference never discusses coil electrodes used for sensing or using
unipolar coil electrodes for sensing SV and/or SVT signals" (id. at 9).
Appellants also allege that "[a]t best, modifying Kim in light of Blow would
result in the A-ring pacing electrode 154 being modified to unipolar
sensing." Id. at 9.
Appellants' arguments are not responsive to the rejection as
articulated by the Examiner. The Examiner is not relying on Blow to teach
coil electrodes. To the contrary, the Examiner is proposing to modify the
intracardiac lead system of Kim, which includes proximal and distal coil
electrodes and a unipolar sensing vector between the distal coil electrode and
the can electrode, to also include a unipolar sensing vector between the
proximal coil electrode and the can electrode, as taught by Blow. See Final
Act. 2-3. Appellants do not explain why Blow's teaching is not applicable
to Kim's coil electrodes. Thus, Appellants do not apprise us of error.
Appellants also argue there is no reason to modify Kim in view of
Blow because "the references deal with different problems in different
ways." Appeal Br. 8; see also Reply Br. 2. According to Appellants, "[o]ne
of skill in the art looking to solve [a] shortcoming in [Kim's] field would not
likely choose the Blow reference ... since the Blow reference mainly is
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Appeal2014-007991
Application 12/277,101
directed towards multi-site pacing, and contains no information on
morphology templates and other features of the Kim reference." Appeal Br.
9; see also Reply Br. 2-3.
Appellants' argument is not persuasive. Here, the Examiner
articulates a reason for combining the teachings of Kim and Blow, i.e. "such
a modification would provide the predictable results of providing reliable
sensing options for facilitating sensing and therapy output" (see Final Act.
3). Appellants do not apprise us of error in this reasoning. Thus, Appellants
do not apprise us of error.
Moreover, to the extent that Appellants are arguing that Kim and
Blow are non-analogous art, we note that "[ t ]wo separate tests define the
scope of analogous prior art: ( 1) whether the art is from the same field of
endeavor, regardless of the problem addressed and, (2) if the reference is not
within the field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved." In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004) (citing In re
Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032,
1036 (CCPA 1979)). Although Kim and Blow may be concerned with
different cardiac sensing and stimulation problems, Kim and Blow are both
directed to intracardiac devices. See Kim i-f 1; see Blow 1: 42--46. Thus,
Kim and Blow are in the same field of endeavor and are analogous art under
the first test.
For these reasons, we sustain the Examiner's decision rejecting claim
1, and clams 4--8, 10-13, 16, and 17, which fall therewith.
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Appeal2014-007991
Application 12/277,101
DECISION
The Examiner's rejection of claims 1, 4--8, 10-13, 16, and 17 is
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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