Ex Parte Stegemann et al

Patent Trial and Appeal Board

Aug 9, 2016

11554162 (P.T.A.B. Aug. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111554, 162 10/30/2006
27581 7590 08/11/2016
Medtronic, Inc. (CRDM)
710 MEDTRONIC PARKWAY NE
MS: LC340 Legal Patents
MINNEAPOLIS, MN 55432-9924
FIRST NAMED INVENTOR
Berthold Stegemann
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.
P0022897 .00/LGl 0126 4987
EXAMINER
D ABREU, MICHAEL JOSEPH
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
08/11/2016 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 BERTHOLD STEGEMANN
and HANS-JUERGEN BRUNS
Appeal2013-008309
Application 11/554, 162
Technology Center 3700
Before NEAL E. ABRAMS, LISA M GUIJT,
and JAMES J. MAYBERRY, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Berthold Stegemann and Hans-Juergen Bruns (Appellants) appeal
under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 14--35.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2013-008309
Application 11/554,162
THE INVENTION
The invention is directed to a method of optimizing pacing intervals in
an implantable cardiac stimulation device. Claim 14, reproduced below, is
illustrative of the claimed subject matter.
14. A method of optimizing pacing intervals in an implantable
cardiac stimulation device comprising:
delivering biventricular stimulation at a first pacing
interval and a second pacing interval;
detecting a hemodynamic state within a range of values;
while the hemodynamic state remains within the range,
concurrently cycling the first pacing interval and the second
pacing interval through a set of values and measuring one or
more cardiac function values; and
identifying the combination of first and second pacing
intervals which produces a maximum cardiac function as being
an optimal combination of intervals for the range of the
hemodynamic state.
THE PRIOR ART
The Examiner relies upon the following as evidence of
unpatentability:
Hall US 2005/0137634 Al June 23, 2005
THE REJECTIONS
Claims 14--16, 19-26, and 29-35 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Hall.
Claims 17, 18, 27, and 28 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hall.
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Appeal2013-008309
Application 11/554,162
OPfNION
Claims 14-16, 19-26 and 29-35
Anticipation -Hall
The dispositive issue with regard to this rejection is whether Hall
discloses or teaches "concurrently cycling the first pacing interval and the
second pacing interval through a set of values and measuring one or more
cardiac function values," a limitation that appears in all three independent
claims. In support of the conclusion that this teaching is found in Hall, the
Examiner looks to the following sentences from two paragraphs of the
reference:
[23] - The A VD 1 interval (and/or BV02 interval) is then varied
while measuring a variable related to cardiac output such as
transthoracic impedance or intracardiac ultrasound (either
external or integral to the device system).
[24] - Either automatically or under the direction of the external
programmer, the implantable device then varies the A VD and/or
BVO intervals \vhile measuring the variable related to cardiac
output and measures the RA-LA3 interval. In an automated
system, the external programmer then automatically programs
the implantable device with the computed optimum pacing
parameter values, while in a semi-automated system the external
programmer presents the computed optimum values to a
clinician in the form of a recommendation.
[24] - In another embodiment, which may be referred to as a
manual system, the external programmer presents the collected
cardiac output data and corresponding AVD and BVO intervals,
as well as the RA-LA interval to a clinician for evaluation.
1 Atrio-ventricular delay (Para. 7)
2 Biventricular offset (Para. 7)
3 Right atrium-left atrium sense or pace (Para. 19)
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Appeal2013-008309
Application 11/554,162
See Ans. 4--5. The Examiner goes on to explain that
because the prior art explicitly uses the language of varying both
the A VD and BVO intervals as shown above, the claim
limitations are anticipated. The appellant argues that all of the
cited text is entirely consistent with holding one of the values
constant while varying the other, but provides not [sic] rationale
behind this contention. If the prior art had only used the word
"or" and not "and" or "and/or", when discussing the varying of
the AVD and BVO intervals, then the Examiner would be
inclined to agree; however, that is clearly not the case as shown
above.
Id. at 5.
Furthermore, in response to Appellants' argument in the Appeal Brief
stating that support for their position is found in Hall's paragraph 26, which
describes an example of the Hall method, the Examiner states on page 6 of
the Answer that
[t]his contention is supported by the position because only one
of the A VO and BVO intervals (of Hall) is varied at a time during
the search process, the other implicitly is held constant. The
examiner agrees with this interpretation; however, this does not
mean the prior art does not meet the claimed limitations.
Id. at 6. This recitation is followed by a discussion of paragraph 34 and
Figure 4 of Appellants' Specification, which the Examiner finds is broad
enough to support the conclusion that the claims do not require that the
pacing intervals be "simultaneously changed," because the example
suggests that the first and second pacing intervals are set to new values and
that "concurrent variations of two intervals ... simply requires that a new
combination is selected" and thus "[ t ]his repetition of intervals through a set
of values does not require that both are simultaneously changed." Id. at 6.
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Appeal2013-008309
Application 11/554,162
The crux of Appellants' argument in response to the positions set
forth by the Examiner is:
"Concurrent" means at the same time. In other words,
during the same time period that the first interval is being varied,
the second interval is also being varied. "Concurrent" variation
thus excludes varying the first interval over its possible range of
values while the second is held constant and then and only
afterwards varying the second interval over its possible range of
values.
[T]he only source for the teaching of concurrent variation
in the above excerpt of Hall is the Examiner. All that "and"
means is that both are ultimately varied. They don't have to be
varied at the same time. As expressly acknowledged by the
Examiner, in the more specific explanation of the variation of the
intervals, they are not varied at the same time. Each is held
constant throughout the time period during which the other is
varied.
Reply Br. 2-3. With regard to the Examiner's contention that Appellants'
Specification defines the claimed method broadly enough to be met by the
teachings of Hall, Appellants assert that, when read in the context of
paragraphs 33-37, it is clear that the invention differentiates from that
disclosed in Hall, in that the first and second pacing intervals are
concurrently cycled even when new values are utilized. See Reply Br. 5-8
All three of Appellants' independent claims require "concurrently
cycling" the first and second pacing intervals. The common definition of
"concurrently" is "operating or occurring at the same time."4 We agree with
Appellants' reasoning that Hall fails to teach this limitation, and that the
Examiner's reliance upon Appellants' Specification to support a broadening
of the definition of "concurrently" is misplaced. In particular, we share
4 See, e.g., http://www.merriam-webster.com/dictionary/concurrent.
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Appeal2013-008309
Application 11/554,162
Appellants' view that Hall's use of "and" and "and/ or" in the description of
the Hall method in paragraph 23 does not disclose or teach that the A VD
interval and the BVO interval are cycled concurrently, but indicates only
that, at some point, each of the A VD and BVO intervals is cycled.
The rejection of independent claims 14--16 and dependent claims 19--
26 and 29--35 as being anticipated by Hall is not sustained.
Claims 17, 18, 27, and 28
Obviousness - Hall
Claims 17 and 27 each add to the independent claims from which they
depend the further limitation that the programming step set forth in the
parent claims is performed automatically, and the Examiner finds this to be
obvious in view of Hall. Final Act. 4. Claims 18 and 28 add to the parent
claims the step of repeating the method of optimization for one or more
additional ranges, which the Examiner finds would involve only routine skill
in the art. Id. Be that as it may, the Examiner has not taken the position
here that considering Hall in the light of35 U.S.C. § 103(a) overcomes the
deficiency we found above to be present in the rejection under 35 U.S.C.
§ 102(b ), and therefore the rejection of these claims also is not sustained.
DECISION
Neither rejection is sustained.
The decision of the Examiner is reversed.
REVERSED
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