Ex Parte Vonk et al

Board of Patent Appeals and Interferences

Aug 8, 2012

10422078 (B.P.A.I. Aug. 8, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BEN F.M. VONK, WILLEM J.A. ESMEIJER,
and HARRY B.A. KERVER
____________

Appeal 2011-006072
Application 10/422,078
Technology Center 3700
____________

Before DONALD E. ADAMS, LORA M. GREEN, and
FRANCISCO C. PRATS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 14, 16-18, 21-25,
27, 30, 32-34, and 36 (App. Br. 2; Ans. 2).
1
We have jurisdiction under 35
U.S.C. § 6(b).

1
Appellants expressly withdrew claims 19, 20, 28, 29, and 35 from appeal
(App. Br. 3). “Where an appellant withdraws some of the appealed claims . .
. the withdrawal is treated as an authorization to cancel the withdrawn
claims” (Manual of Patent Examining Procedure § 1214.05).
Appeal 2011-006072
Application 10/422,078

2
STATEMENT OF THE CASE
The claims are directed to a method of delivering stimulation pulses to
patient tissue (claims 14, 16-18, and 21-24); an implantable pulse generator
(claims 25, 27, and 36); and an apparatus (claims 30 and 32-34). Claim 25
is representative and is reproduced in the Claims Appendix of Appellants’
Brief.
Claims 14, 16-18, 24, 25, 27, 30, 32, and 36 stand rejected under 35
U.S.C. § 103(a) as unpatentable over the combination of Kerver
2
and
Economides.
3

Claims 21-23, 33, and 34 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kerver, Economides, and Whigham.
4

Claims 14, 16-18, 21-25, 27, 30, 32-34, and 36 stand rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of Economides and
Whigham.
We reverse.

The combination of Kerver and Economides, with or without Whigham:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Examiner finds that Kerver suggests an implantable device, such as a
cardiac pacemaker, that comprises every aspect of Appellants’ claimed

2
Kerver et al., US 5,964,787, issued October 12, 1999.
3
Economides et al., US 4,811,738, issued March 14, 1989.

4
Whigham et al., US 4,821,724, issued April 18, 1989.

Appeal 2011-006072
Application 10/422,078

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invention, including the step of terminating charging “during the post-
stimulus phase responsive to the measured voltage being greater than or
equal to a threshold (col. 5, lines 17-21)” (Ans. 4).
FF 2. Examiner finds that Kerver fails to suggest, inter alia, detecting
voltage “across patient tissue” (id.).
FF 3. Kerver suggests the use of a circuit
to determine when the voltage across [the] pacing capacitor . . .
has reached a predetermined value, i.e., a desired value for the
voltage amplitude of the stimulus pulse. When this
predetermined threshold level is reached, a signal is transferred
from [the] circuit . . . to the microprocessor, which then can
control switching of the output stage from the prestim
arrangement to the stimulus arrangement.

(Kerver, col. 5, ll. 7-14.)
FF 4. Examiner relies on Economides to suggest a pacing system that
measures voltage across patient tissue (Fig. 2 and col. 1, lines 61-66) (Ans.
4).
FF 5. “Intrinsic cardiac pulses may be measured using an electrode placed
in or in the vicinity of a heart and an example of such pulses for a healthy
patient is shown in FIG. 1A,” reproduced below. “For each heartbeat, the
pulses comprise a wave labelled [sic] P which causes the atria to contract,
and a complex wave form labelled [sic] QRST associated with the
contraction of the ventricles”:

(Economides, col. 1, ll. 7-14). FIG. 1A illustrates “waveforms of the
electrical activity appearing in the heart of a healthy patient” (id. at col. 2, ll.
22-23).
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FF 6. “A pacemaker circuit comprises a pulse generator connected to a
stimulating electrode embedded in the patient’s atrium or ventricle and a
reference electrode positioned outside the heart. . . . The generator applies
stimulus pulses across these two electrodes which replaces the evoked
pulses” as illustrated in FIG. 1B below:

(id. at col. 1, ll. 14-27). FIG. 1B illustrates “a waveform appearing at the
stimulating electrode of a pacemaker circuit” (id. at col. 2, ll. 25-26).
FF 7. As illustrated in Economides’ FIG. 1B, “[d]uring each stimulus
pulse, electrical charge is stored in the interface between the stimulus
electrode and the myocardium, and the charge then decays upon termination
of the stimulus pulse” (id. at col. 1, ll. 21-24).
FF 8. “[T]he charge which is stored and its subsequent decay masks the
evoked heart response” (id. at ll. 27-29; see FIG. 1B; Cf. FIG. 1A).
FF 9. Economides suggests that “it is useful to detect . . . evoked pulses as
they may be used both for diagnosis and for modifying the operation of the
pacemaker circuit,” and therefore suggests a pacemaker circuit that
comprises a “charge removing means” (id. at ll. 29-31 and 33-60).
FF 10. As illustrated in Economide’s FIG. 2, reproduced below,
Economide suggests a “charge removing means . . . arranged to sample the
voltage difference between the stimulating terminal [10, connected to
stimulating electrode 11,] and the reference terminal [12, connected to
reference electrode 13,] upon termination of a stimulus pulse and to apply an
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electrical pulse across the electrodes in accordance with the result of the
sampling operation”

(id. at ll. 53-66). “FIG. 2 is a block diagram of a preferred embodiment of
. . . [Economides’] invention” (id. at col. 2, ll. 27-28).
FF 11. Economides suggests a cardiac pacemaker circuit that comprises a
[C]harge reducing means compris[ing] means for repeatedly
sampling the voltage difference between said first terminal and
said reference voltage means on termination of said stimulus
pulse and reducing said stored charge after each said sample
until the voltage across said first and second terminals is
reduced to a value substantially equal to zero.

(id. at col. 8, ll. 7-14.)
FF 12. Examiner relies on Whigham to suggest
[C]ircuitry that blanks sensing circuitry prior to the pre-
stimulus phase . . ., terminates blanking after voltage in a
patient is greater than a threshold . . ., measures an evoked
response following terminating the blanking . . ., and terminates
the blanking within 50 ms after discharging the capacitor . . . to
eliminate . . . erroneous detection of unwanted signals, while
still acquiring the evoked response.

(Ans. 5-6.)
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ANALYSIS
Based on the combination of Kerver and Economides, Examiner
concludes that, at the time of Appellants’ claimed invention, it would have
been prima facie obvious to a person of ordinary skill in this art to “modify
Kerver by providing a voltage detector that detects voltage during the post-
stimulus period specifically in the intervals in which charging does not occur
and measures across patient tissue during the post-stimulus phase to provide
the predictable results of effectively avoiding the masking of evoked heart
potentials” (Ans. 5). According to Examiner, “an artisan of ordinary skill
would be provided sufficient guidance to modify Kerver . . . by placing the
two nodes of the voltmeter . . . across patient tissue . . . instead of or in
addition to the capacitor . . . due to the simplicity of this
operation/modification” (id. at 9). We are not persuaded.
Examiner provides evidence that Kerver’s circuit, inter alia,
determines when voltage across a pacing capacitor has reached a
predetermined value (FF 3). According to Kerver, when the voltage across
the pacing capacitor has reached a predetermined value a signal is sent to
the microprocessor that switches the device from a prestimulation
arrangement to a stimulus arrangement (id.; App. Br. 7). Thus, Kerver’s
circuit is designed to act upon and monitor the capacitor. In contrast,
Economides’ charge removing means is not concerned with the capacitor
(Cf. FF 5-10). Instead, Economides is interested in removing the masking
effect of a pacemaker stimulus pulse on the hearts evoked response (FF 8-
10; see Fig. 1b, at FF 6; Cf. FIG. 1a, at FF 5). Stated differently, in contrast
to Kerver, Economides is concerned with the electrical charge, and decay of
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7
charge, that is stored in the interface between the stimulus electrode and the
myocardium during each stimulus pulse (FF 7).
Appellants’ claimed invention requires, inter alia, circuitry for taking
measurements during the post-stimulus phase and terminating the charging
of the capacitor during the post-stimulus phase responsive to the measured
voltage across the patient tissue being greater than or equal to a threshold
(see Claims 14, 25, and 30). While it may be true, as Examiner suggests,
that a person of ordinary skill in this art would have found it obvious to
incorporate Economides’ charge reducing means into Kerver’s circuit,
Examiner failed to explain how such a modification would result in circuitry
for terminating the charging of the capacitor during the post-stimulus phase
responsive to the measured voltage across the patient tissue as required by
Appellants’ claimed invention. Economides’ claim 1 does not support a
contrary conclusion (FF 11; see generally App. Br. 9-10).
Examiner failed to explain how Whigham makes up for the
evidentiary void in the combination of Kerver and Economides (see FF 12).
Appellants do not address the rejection over the combination of
Economides and Whigham (see Ans. 11). Examiner, however, asserts that
since “Appellant’s argument is that Economides lacks a teaching of
measuring voltage across patient tissue, th[is] rejection[] appear[s] to stand
or fall with the rejections above” (id.). Therefore, as set forth above, we find
that Examiner failed to explain how Whigham makes up for the deficiencies
in Economides.
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support a
conclusion of obviousness.
Appeal 2011-006072
Application 10/422,078

8
The rejection of claims 14, 16-18, 24, 25, 27, 30, 32, and 36 under 35
U.S.C. § 103(a) as unpatentable over the combination of Kerver and
Economides is reversed.
The rejection of claims 21-23, 33, and 34 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kerver, Economides, and Whigham is
reversed.
The rejection of claims 14, 16-18, 21-25, 27, 30, 32-34, and 36 under
35 U.S.C. § 103(a) as unpatentable over the combination of Economides and
Whigham is reversed.

REVERSED

cdc