Ex Parte Woods et al

Patent Trial and Appeal Board

Nov 27, 2013

11625281 (P.T.A.B. Nov. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/625,281 01/19/2007 Carla Mann Woods 05-00474-06 8197
23410 7590 11/27/2013
Vista IP Law Group LLP
2040 MAIN STREET, Suite 710
IRVINE, CA 92614
EXAMINER
GHAND, JENNIFER LEIGH-STEWAR
ART UNIT PAPER NUMBER
3766
MAIL DATE DELIVERY MODE
11/27/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte CARLA MANN WOODS, JAMES R. THACKER, and
DAVID K.L. PETERSON
__________

Appeal 2011-012224
Application 11/625,281
Technology Center 3700
__________

Before TONI R. SCHEINER, ULRIKE W. JENKS, and ZHENYU YANG,
Administrative Patent Judges.

YANG, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal1 under 35 U.S.C. § 134 involving claims
44-66. The Examiner has rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse the Examiner’s decision and enter new grounds of
rejection.

1 Appellants identify Boston Scientific Neuromodulation Corporation as the
Real Party in Interest. (App. Br. 2.)
Appeal 2011-012224
Application 11/625,281

2
STATEMENT OF THE CASE
Claims 44-66 are rejected and on appeal. (App. Br. 2.) Claims 44,
52, and 57 are independent claims. They read:
44. An implantable medical device system,
comprising:
an implantable medical device configured for
maintaining an actual status of the capacity of a power source
contained in the implantable medical device; and
an external programmer configured for being alternately
placed in telecommunicative contact with the implantable
medical device and removed from telecommunicative contact
with the implantable medical device, the external programmer
configured for maintaining an estimated status of the power
source capacity when the external programmer is not in
telecommunicative contact with the implantable medical
device, the external programmer including a status indicator
configured for indicating an estimated status of the power
source derived from the estimated status of the power source
capacity, the external programmer configured for reconciling
the estimated status of the power source capacity with the actual
status of the power source capacity when the external
programmer is in telecommunicative contact with the
implantable medical device.
52. An external programmer for an implanted medical
device containing a power source, comprising:
a telemetry circuit configured for wirelessly
communicating with the implanted medical device; and
a processor circuit configured for maintaining an
estimated status of the capacity of the power source, receiving
an actual status of the power source capacity from the
implanted medical device via the telemetry circuit and
reconciling the estimated status of the power source capacity
with the actual status of the power source capacity; and
Appeal 2011-012224
Application 11/625,281

3
a status indicator configured for indicating an estimated
status of the power source derived from the estimated status of
the power source capacity.
57. A method of indicating the status of a power source
in a medical device implanted within a patient, comprising:
maintaining an actual status of the capacity of the power
source contained in the implanted medical device;
maintaining an estimated status of the power source
capacity;
indicating an estimated status of the power source
derived from the estimated status of the power source capacity;
and
communicating with the implanted medical device to
reconcile the estimated status of the power source capacity with
the actual status of the power source capacity.
The Examiner rejected claims 44-50, 52-55, and 57-66 under
35 U.S.C. § 103(a) as obvious over Thompson2 in view of Echarri.3 The
Examiner also rejected claims 51 and 56 under § 103(a) as obvious over
Thompson in view of Echarri, further in view of Barreras.4

FINDINGS OF FACT
1. Thompson teaches a method and apparatus for estimating the
remaining capacity of a battery of an implantable medical device.
(Thompson, Abstract; see also FIG. 1.)

2 Thompson, U.S. Pat. No. 5,391,193, issued on Feb. 21, 1995.
3 Echarri et al., U.S. Pat. Appl. No. 2002/0140399 A1, published on Oct. 3,
2002.
4 Barreras, U.S. Pat. No. 5,591,217, issued on Jan. 7, 1997.
Appeal 2011-012224
Application 11/625,281

4
2. Thompson’s apparatus has an external programming device, i.e.,
telemetry controller 30, which “includes telemetry transmit and receive
circuitry 32, modulate/demodulate circuitry 34, programmer 36, and display
means 38.” (Id. at col. 5, ll. 6-8.)
3. Thompson utilizes the readings of a battery’s current drain and open
circuit voltage taken at various times during the operational life of the
battery to calculate the battery’s internal impedance. (Id. at col. 3, ll. 28-34.)
“Each measurement of impedance is stored along with an indication of when
such measurement was made.” (Id. at Abstract.) “All values of battery
impedance and time-from-implant are stored as pairs for future use, for
example in memory within the implantable device, or in an external
programming device communicating with the implantable device via a
telemetry link.” (Id. at col. 3, ll. 34-39.)
4. According to Thompson,
Nomographic analysis, based upon the rated capacity of the
battery and the expected internal impedance at various stages of
depletion, allows for two or more time-stamped impedance
measurements to serve as the basis for an extrapolation to
estimate the remaining service life of the implantable medical
device. Nomographic analysis may be performed by circuitry
contained in the implanted device itself; in the alternative,
periodic impedance measurements may be communicated to
external processing circuitry via a telemetry channel.
(Id. at Abstract.)
5. Thompson discloses that “[t]he nomographic extrapolation of the
expected longevity may be made based upon the initial data point and the
current data point, or based upon a curve which is fitted to the most recent
two or three data points or alternatively, to all the available data points.” (Id.
Appeal 2011-012224
Application 11/625,281

5
at col. 3, ll. 47-51.) In Thompson, “impedance measurements are made and
recorded throughout the operational lifetime of the battery.” (Id. at col. 3, ll.
58-61.) “[B]ecause all new data is utilized in conjunction with previously
obtained data, the nomographically projected battery longevity becomes
increasingly reliable and accurate throughout the battery’s life.” (Id. at col.
3, ll. 61-64; see also col. 6, ll. 38-47.)
6. Specifically, Thompson teaches that the external programmer may be
selectively actuated to send a signal through the telemetry channel to
activate the battery impedance measurement circuitry in the implanted
device. (Id. at col. 5, ll. 40-42.) Upon receiving this signal, the
measurement circuitry will measure the internal impedance of the battery at
that point in time. (Id. at col. 5, ll. 43-45.) Afterwards, the measurement
value may be stored in the memory of the implantable device or telemetered
to the external programmer. (Id. at col. 5, ll. 47-53.) In addition, “a value
reflecting the time at which such measurement was made is also produced.”
(Id. at col. 5, l. 64 – col. 6, l. 12.)
7. Thompson also teaches that the implantable medical device may
further include a processing circuitry that may calculate the battery longevity
based on the impedance measurement. (Id. at col. 5, ll. 55-61.) The
computed value of battery longevity can be telemetered to the external
programmer for display on the display means. (Id. at col. 5, ll. 61-63.)
8. According to Thompson, “the nomograph of FIG. 2 enables a battery
impedance measurement value taken at a particular time (i.e., a time-from-
implant/internal impedance data pair) to be used as a basis for predicting the
App
App

rema
repro
9.
(Id. a
eal 2011-0
lication 11
ining long
duced bel
Thomps
The nom
along it
series of
30-µA .
reflect th
µA cons
nomogra
means
nomogra
µA curre
The no
impedan
Each im
line. Wh
current d
kΩ, 5.0-
that tim
current.
t col. 6, l.
12224
/625,281
evity of a
ow:
on teaches
ograph o
s vertical
“constan
.. 100[µ]A
e rated ca
tant curre
ph in FIG
that for
ph of FIG
nt drain w
mograph
ce curves
pedance c
ere an im
rain line,
kΩ, etc[.]
e of a b
48 – col. 7
battery.”
,
f FIG. 2 h
axis. The
t current d
in FIG. 2
pacity of
nt drain l
. 2 at appr
the batte
. 2, a bat
ill be depl
of FIG.
, designat
urve inte
pedance
the value
. . .) is t
attery bein
, l. 5.)
6
(Id. at col.
as units o
nomogra
rain” line
. . . T
a given ba
ine interse
oximately
ry capac
tery subje
eted in ap
2 also i
ed 2.5-kΩ
rsects eac
curve int
of the im
he expecte
g drained
6, ll. 33-3
f zero thr
ph furthe
s, designa
he constan
ttery type
cts the rig
the seven
ity repres
cted to a
proximate
ncludes a
[,] 5.0-kΩ
h constan
ersects a
pedance c
d interna
at the
7.) FIG. 2
ough ten y
r consists
ted as 20
t current
. . . . Th
ht side o
year level
ented in
continuou
ly seven y
plurality
[,] ... 20
t current
given con
urve (i.e.,
l impedan
given con
is
ears
of a
-µA,
lines
e 30-
f the
; this
the
s 30-
ears.
of
-kΩ.
drain
stant
2.5-
ce at
stant

Appeal 2011-012224
Application 11/625,281

7
10. Thompson explains,
After an impedance measurement has been obtained, the first
step in using the nomograph of FIG. 2 is to locate the
intersection of a horizontal line corresponding to the time-from-
implant at which an impedance measurement is made, with the
impedance curve corresponding to that measured impedance . . .
A line drawn from the initial implant data point through this
intersection point can be extended to the right edge of the
nomograph of FIG. 2 to yield an extrapolated battery depletion
time.
(Id. at col. 7, ll. 18-29.)
11. Thompson discloses that “programmer 36 may be configured to
perform the numeric computations necessary for linear or curve-fitting
estimation of battery longevity.” (Id. at col. 5, ll. 14-17.) Alternatively, the
nomograph may be expressed as a collection of look-up tables (id. at col. 8,
ll. 11-13), which can be stored in the external programmer, “to be accessed
after measured impedance values are telemetered out of the device” (id. at
col. 9, ll. 1-4).
12. Thompson further teaches,
Each time a new impedance measurement is made, an updated
estimate of battery longevity can be nomographically
extrapolated from the nomograph of FIG. 3. At one-half year
after implant, for example, when data point D1 is obtained, a
straight line through the starting point (D0) and the data point
D1 can be extended to the right side of the nomograph to yield
an extrapolated longevity estimate of just over three years.
At one year after implant, a second impedance reading, plotted
as D2 in FIG. 3, is made. If a line is drawn through points D0
and D2 and extended to the right side of the nomograph, this
yields a new longevity estimate of approximately five years.
(Id. at col. 7, ll. 56-68.) FIG. 3 is reproduced below:
App
App

broa
wou
Sci.
taken
Gorm
teach
capa
telec
comm
fact,
eal 2011-0
lication 11
During p
dest reason
ld be interp
Tech Ctr.,
The test
as a who
an, 933 F

In reject
the impla
city of a p
ommunica
unicate a
in Thomp
12224
/625,281
rosecution
able inter
reted by o
367 F.3d
of obviou
le, would h
.2d 982, 9
ing the cla
ntable me
ower sourc
tive conta
n actual st
son, all va
PRINCIP
before th
pretation c
ne of ordi
1359, 1364
sness is “w
ave made
86 (Fed. C
AN
ims, the E
dical devic
e and plac
ct with the
atus of the
lues of bat
8
LES OF L
e Office, c
onsistent w
nary skill
(Fed. Cir
hether the
obvious t
ir. 1991).
ALYSIS
xaminer fo
e maintain
ing the ex
implantab
power so
tery imped

AW
laims are
ith the sp
in the art.
. 2004).
teachings
he claimed

und that “
ing an ac
ternal pro
le medica
urce capac
ance may
to be given
ecification
In re Am.
of the pri
invention
Thompson
tual status
grammer i
l device to
ity.” (An
be stored
their
as it
Acad. of
or art,
.” In re
does not
of the
n

s. 5.) In
in memory

Appeal 2011-012224
Application 11/625,281

9
within the implantable device or telemetered to the external programmer.
(FF 3 and 6.) Thompson also teaches that the implantable medical device
may further include processing circuitry that, based on the impedance
measurement, may calculate the battery longevity, which can be telemetered
to the external programmer. (FF 7.) In other words, Thompson teaches an
implantable medical device maintaining an actual status of the capacity of a
power source and communicating the actual status of the power source
capacity to an external programmer in telecommunicative contact with the
implantable medical device. Because substantial evidence does not support
the Examiner’s finding, which serves as the basis of the rejection of claims
44-66, we reverse the Examiner’s decision.

NEW GROUND OF REJECTION
Pursuant to 37 C.F.R. § 41.50(b), claim 44 is rejected under 35 U.S.C.
§ 103(a) over Thompson, and claims 52 and 57 are rejected under 35 U.S.C.
§ 102(b) over Thompson.5
Claims 44, 52, and 57 all contain the limitation of “maintaining an
actual status of the capacity of the power source” and/or “maintaining an
estimated status of the power source capacity.” We interpret the term
“maintaining” broadly to encompass “storing.” This construction is
consistent with the Specification. For example, according to the Summary
of the Invention, “[t]he method comprises implanting the medical device

5 We apply the new ground to only the independent claims and leave it to the
Examiner to determine the patentability of the dependent claims in light of
the new ground of rejection.
Appeal 2011-012224
Application 11/625,281

10
within a patient, and maintaining an actual status of the power source (e.g., a
capacity of the power source) in the implanted medical device. One method
comprises storing the actual status of the power source within the implanted
medical device.” (Spec. ¶ [0016] (emphases added).)
Regarding claim 57, Thompson teaches maintaining an actual status
of the capacity of the power source. (See FF 3, 6, and 7 (measuring and
storing the battery’s internal impedance, time-from-implant, and the
calculated battery longevity).)
Thompson also teaches maintaining an estimated status of the
capacity of the power source. (See FF 4 and 8-11 (extrapolating battery
depletion time using the nomograph of FIG. 2 and storing the extrapolated
battery longevity estimate).)
In Thompson, the display means indicates the estimated status of the
power source. (FF 2.)
Thompson further teaches communicating with the implanted medical
device to reconcile the estimated status with the actual status of the power
source capacity. (See FF 4-7 and 12 (telemetering impedance measurements
and computed value of battery longevity from the implanted device to the
external programmer to update the extrapolation).)
Regarding claim 52, Thompson teaches an external programmer
comprising a telemetry circuit and a processor circuit as claimed. (See FF 1
and 2; see also findings above related to claim 57 for limitation-by-
limitation analysis.)
In addition to the limitations similar to those in claims 52 and 57,
claim 44 further requires that the external programmer is “configured for
Appeal 2011-012224
Application 11/625,281

11
maintaining an estimated status of the power source capacity when the
external programmer is not in telecommunicative contact with the
implantable medical device.” It is unclear whether Thompson explicitly
discloses this limitation. Thompson does teach, however, that (1) the
external programmer may be selectively actuated to send a signal to activate
the battery impedance measurement circuitry in the implanted device (FF 6);
and (2) the external programmer can maintain the look-up tables showing
the estimated battery longevity, which is “to be accessed after measured
impedance values are telemetered out of the device” (FF 11 (emphasis
added)). As such, it would have been obvious to one skilled in the art that
the telecommunicative contact between the external programmer and the
implanted device is not necessary for maintaining the estimated status of the
power source capacity.

SUMMARY
Because substantial evidence does not support the Examiner’s finding,
we reverse the Examiner’s rejection of claims 44-66. We find that
Thompson teaches all the limitations of claims 52 and 57. We also find that
Thompson suggests an external programmer “configured for maintaining an
estimated status of the power source capacity when the external programmer
is not in telecommunicative contact with the implantable medical device”
and teaches the other limitations of claim 44. Therefore, we conclude that
Thompson anticipates claims 52 and 57 and renders claim 44 obvious.

Appeal 2011-012224
Application 11/625,281

12
TIME PERIOD FOR RESPONSE
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). This section of
the Regulation provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.” 37 C.F.R. §
41.50(b).
Section 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. …
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. …

REVERSED; 37 C.F.R. § 41.50(b)

cdc