Ex Parte Sawchuk

Patent Trial and Appeal Board

Oct 31, 2016

12179166 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/179, 166 07/24/2008
27581 7590 11/02/2016
Medtronic, Inc. (CRDM)
710 MEDTRONIC PARKWAY NE
MS: LC340 Legal Patents
MINNEAPOLIS, MN 55432-9924
FIRST NAMED INVENTOR
Robert T. Sawchuk
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.
P0023178.0l/ll l l-017US01 7662
EXAMINER
PATEL, NATASHA
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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 ROBERT J. SAWCHUK
Appeal2013-004419
Application 12/179, 166
Technology Center 3700
Before JOHN C. KERINS, JAMES P. CAL VE, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Robert T. Sawchuk (Appellant) has filed a Request for Rehearing
("Request") under 37 C.F.R. 41.52. The Request seeks a designation of our
affirmance of rejections under 35 U.S.C. §§ 102 and 103 in the Decision on
Appeal ("Decision"), dated August 9, 2016, as new grounds of rejection
under 37 C.F.R. § 41.50(b). We have jurisdiction under 35 U.S.C. § 6(b).
Appellant cites to several portions of the Decision that contain
analysis not present in the Final Action or the Examiner's Answer. Request
2---6. Upon careful consideration of Appellant's position, we believe that
those portions of the analysis merely more clearly explain the basis for the
Appeal2013-004419
Application 12/179, 166
Examiner's rejections involving the Sawchuk1 reference, and that the
Examiner's articulated reasoning and factual underpinnings are sufficient to
sustain the rejections. In particular, all or nearly all of the additional
analysis cited by Appellant is directed to explaining why the Examiner's
reliance on Sawchuk for its teaching of evaluating the integrity of the
sensing process is appropriate, notwithstanding that Sawchuk additionally
discloses selection of an optimal sensing vector from among a plurality of
such vectors. Nonetheless, out of an abundance of fairness, we believe that
Appellant should be afforded the opportunity to exercise an option afforded
by 37 C.F.R. § 41.50(b) relative to the additional explanatory portions in the
Decision.2
In view of the foregoing, the Request to designate the affirmed
rejections as new grounds of rejection under 37 C.F.R. § 41.50(b) is granted.
The affirmance of the rejections on appeal otherwise remains as set forth in
the Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REQUEST GRANTED; 37 C.F.R. §41.50(b)
1 US 2004/0088018 Al, published May 6, 2004. We note that Appellant is
listed as a co-inventor on this published application.
2 We note that Appellant presented only arguments directed to claim 1, and
did not present any arguments for the separate patentability of any other
claim on appeal. Any such arguments pertaining to the Examiner's rejection
are therefore waived.
2