Medtronic, Inc.

Patent Trials and Appeals Board

Jul 15, 2021

2020006666 (P.T.A.B. Jul. 15, 2021)

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.
14/612,855 02/03/2015 Rónán Wood C0008624.USU1/
LG10126.L33
5246
27581 7590 07/15/2021
Medtronic, Inc. (CVG)
8200 Coral Sea Street NE.
MS: MVC22
MINNEAPOLIS, MN 55112
EXAMINER
SCHWIKER, KATHERINE H
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
07/15/2021 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):
rs.patents.one@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RÓNÁN WOOD
Appeal 2020-006666
Application 14/612,855
Technology Center 3700
Before DANIEL S. SONG, EDWARD A. BROWN, and LEE L. STEPINA,
Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 12, 14, and 16–19. Claims 4–10
have been withdrawn. Appeal Br. 4, 19–21 (Claims App.); Final Act. 2. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). The Appellant identifies the real party in interest as
Medtronic, Inc. Appeal Br. 3.
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Application 14/612,855

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CLAIMED SUBJECT MATTER
The claims are directed to an implantable medical device. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An implantable medical device comprising:
an electronic controller,
a hermetically sealed housing containing the controller,
an electrode electrically coupled to the controller and
mounted in proximity to a distal end of the housing,
a fixation member mounted to the distal end of the
housing,
a tether that defines an uncompressed cross-sectional
width and a compressed cross-sectional width that is relatively
smaller than the uncompressed cross-sectional width, the tether
being looped within a delivery catheter, and
a tether catch for engaging the tether, the tether catch being
formed by a relatively rigid structure protruding from a proximal
end of the housing, the housing extending along a longitudinal
axis between the proximal and distal ends, and wherein the tether
catch comprises:
a hook surface extending between a first end and a
second end of the relatively rigid structure that is
configured to receive the tether, the hook surface including
a portion facing directly toward the proximal end of the
housing; and
the second end of the structure being spaced apart
from the proximal end of the housing by a gap that defines
a distance no greater than the uncompressed cross-
sectional width when the structure is in a resting state.
Appeal Br. 19 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
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Name Reference Date
Pinchuk US 2006/0136070 A1 June 22, 2006
Bain US 2008/0097482 A1 Apr. 24, 2008
Khairkhahan US 2012/0197373 A1 Aug. 2, 2012
Staunton US 2012/0203246 A1 Aug. 9, 2012
Steingisser US 2013/0103047 A1 Apr. 25, 2013
Hammack US 2014/0058404 A1 Feb. 27, 2014
REJECTIONS
The Examiner rejects various claims under 35 U.S.C. § 103 as
follows:
1. Claims 1, 2, 12, 16, and 17 as being unpatentable over
Khairkhahan in view of Bain. Final Act. 4.
2. Claims 1, 2, 12, 16, and 17 as being unpatentable over
Khairkhahan in view of Pinchuk. Final Act. 6.
3. Claim 14 as being unpatentable over Khairkhahan in view of
Bain and Hammack. Final Act. 9.
4. Claim 14 as being unpatentable over Khairkhahan in view of
Pinchuk and Hammack. Final Act. 10.
5. Claim 18 as being unpatentable over Khairkhahan in view of
Bain and Steingisser. Final Act. 11.
6. Claim 19 as being unpatentable over Khairkhahan in view of
Bain, Steingisser, and Staunton. Final Act. 12.
7. Claim 18 as being unpatentable over Khairkhahan in view of
Pinchuk and Steingisser. Final Act. 13.
8. Claim 19 as being unpatentable over Khairkhahan in view of
Pinchuk, Steingisser, and Staunton. Final Act. 15.
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OPINION
Rejection 1: Khairkhahan in view of Bain
The Examiner rejects claims 1, 2, 12, 16, and 17 as being unpatentable
over Khairkhahan in view of Bain. Final Act. 4. As to independent claim 1,
the Examiner finds that Khairkhahan discloses an implantable medical
device substantially as claimed including the recited tether and tether catch,
except for:
the tether that defines an uncompressed cross-sectional width
and a compressed cross-sectional width that is relatively
smaller than the uncompressed cross-sectional width; [and] a
distance of the gap being no greater than the uncompressed
cross-sectional width of the tether.
Final Act. 5–6 (citing Khairkhahan ¶¶ 55–56; Figs. 6A, 6B). The Examiner
finds that Bain discloses a tether and tether catch having the noted missing
features of Khairkhahan, and concludes that it would have been obvious to
one of ordinary skill in the art to modify the medical device of Khairkhahan:
to have the tether define an uncompressed cross-sectional width
and a compressed cross-sectional width such that the distance
of the gap is [no] greater than the uncompressed cross-sectional
width of the tether as taught by Bain, for the purpose of being
able to maintain the tether in the tether catch to prevent
premature or unwanted disengagement of the tether from the
tether catch.
Final Act. 6 (citing Bain ¶ 83, Figs. 6, 7).
The Appellant argues, inter alia, that the rejection is improper
because, if the teachings of Bain are applied to Khairkhahan, “the
compression of tether 622 within attachment feature 624 to secure the tether
622 against movement would necessarily frustrate the ability of tether 622 to
move through attachment feature 624 to transition tether features 626
between the aligned and unaligned positions in the manner described by
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Khairkhahan.” Appeal Br. 8. Accordingly, the Appellant argues that the
proposed modification “would have rendered tether 622 and attachment
feature 624 unsatisfactory for their intended purpose and changed their
principle of operation, making this proposed modification improper.”
Appeal Br. 8. Based thereon, the Appellant argues that “there would have
been no apparent reason to incorporate the features from Bain in the
pacemaker and delivery system of Khairkhahan.” Appeal Br. 7. We agree
with the Appellant for the reasons argued.
The Examiner responds that although the tether 622 of Khairkhahan is
“not moved through tissue in the manner of a needle, one of ordinary skill in
the art would still recognize the benefit of having the tether more fixedly
secured to the attachment feature (as taught by Bain) in order to prevent
accidental/unintended release of [the] tether from the attachment feature.”
Ans. 4. However, it is clear that the tether 622 of Khairkhahan must be able
to slide within the attachment feature in order for the device of Khairkhahan
to function in the intended manner, and the proposed modification based on
Bain would appear to impede such functionality. See Khairkhahan ¶ 56.
In a seeming modification to the rejection, the Examiner further
responds that the functionality of the tether is not being modified and that
only “the size of the hook compared to that of the tether” is being modified
such that the combination “would still enable adjusting the length of the
tether by sliding the tether.” Ans. 5. In that regard, the Examiner finds that
“the intended purpose and principal operation of the tether and hook of
Khairkhahan are to engage one another to secure the tether to the hook,” and
asserts that the “modification of Khairkhahan with Bain does not change this
intended purpose or principal operation in any way.” Ans. 5.
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However, Khairkhahan does not disclose what the function of the
hook is such that there is no basis for the Examiner’s finding that the tether
and the hook of Khairkhahan engage one another to secure the tether to the
hook. Indeed, Khairkhahan’s tether is actually threaded through the loop of
the attachment feature 624, and not inserted through the gap of the hook.
See Khairkhahan Figs. 6A, 6B; Appeal Br. 9–10. Accordingly, there is also
no indication that the gap in Khairkhahan serves the same function as that of
Bain.
In yet seemingly another shift in the reasoning, the Examiner asserts
that “Khairkhahan and of Bain do not have to have the same function” for
the modification to be obvious, and that “[the] device of Khairkhahan need
only be capable of performing this function,” i.e., of allowing the tether to
pass through the gap while being larger than the gap when uncompressed.
Ans. 6. The Examiner explains that even if the tether of Khairkhahan is
disclosed as being threaded through the loop of the attachment feature, this
is “irrelevant because the tether would still be capable of being threaded
through the gap of the hook.” Ans. 6.
However, we agree with the Appellant that such a position
undermines the rejection because if the gap of Khairkhahan and of Bain do
not have the same function, and Khairkhahan instead threads the tether
through its loop rather than through the gap, it is not apparent at all why a
person of ordinary skill would modify the gap of the hook to be associated
with the tether, i.e., to be “no greater than the uncompressed cross-sectional
width when the structure is in a resting state” as recited by claim 1. Reply
Br. 4. Because the tether has no relevance as to the dimension of the gap of
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the hook, it would not inform a person of ordinary skill to dimension the gap
based on the uncompressed width of the tether.
In summary, Khairkhahan does not use the gap in the hook of the
tether catch as asserted by the Examiner, and instead, discloses threading the
tether through a loop in the tether catch. Accordingly, the Examiner’s
asserted findings with respect to the operation of Khairkhahan, and the
reasoning based on alleged deficiency thereof, are not supported by the
record and rational underpinnings. Thus, the rejection appears to be based
on impermissible hindsight, and we reverse this rejection of independent
claim 1, and of claims 2, 12, 16, and 17 depending from claim 1.

Rejection 2: Khairkhahan in view of Pinchuk
The Examiner also rejects claims 1, 2, 12, 16, and 17 as being
unpatentable over Khairkhahan in view of Pinchuk. Final Act. 6. The
Examiner relies on Pinchuk for disclosing a tether and tether catch that
includes the features noted to be missing in Khairkhahan. Final Act. 6–8
(citing Khairkhahan ¶¶ 55–56; Figs. 6A, 6B; Pinchuk ¶ 34; Figs. 4A–4C).
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art to have modified the medical device of Khairkhahan in view
of Pinchuk to result in the invention claimed for the same reason articulated
relative to Bain in Rejection 1.
The Appellant sets forth arguments that are substantively similar to
those of Rejection 1, and thus, argues, inter alia, that “there would have
been no apparent reason to incorporate the features from Pinchuk in the
pacemaker and delivery system of Khairkhahan.” Appeal Br. 12–14; Reply
Br. 6–9. The Examiner’s response substantively repeats the responses set
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forth relative to Rejection 1, and further notes that the reason for the
proposed modification is “expressly taught in Pinchuk . . . [and] one of
ordinary skill in the art would recognize the benefit of having the tether
more fixedly secured to the attachment feature (as taught by Pinchuk) in
order to prevent accidental / unintended release of tether from the attachment
feature.” Ans. 7 (citing Pinchuk ¶ 34). Ans. 7–9.
This rejection is also deficient in that, as discussed above relative to
Rejection 1, it is based on an erroneous finding with respect to the operation
of Khairkhahan, and the reasoning is based on an alleged deficiency thereof,
which is not supported by the record and rational underpinnings. Thus, we
reverse the same.

Rejections 3–8: Remaining Dependent Claims
The Examiner rejects the remaining claims 14, 18, and 19 relying on
other tertiary references in combination with Khairkhahan, and Bain or
Pinchuk, as set forth in Rejections 1 and 2, respectively. However, the
Examiner’s application of these tertiary references does not remedy the
deficiencies of the Examiner’s asserted findings with respect to the operation
of Khairkhahan, or the reasoning set forth. Accordingly, we reverse
Rejections 3–8. The Appellant’s various arguments directed to the rejected
claims are moot.
CONCLUSION
The Examiner’s rejections are reversed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 12, 16,
17
103 Khairkhahan, Bain 1, 2, 12, 16,
17
1, 2, 12, 16,
17
103 Khairkhahan,
Pinchuk
1, 2, 12, 16,
17
14 103 Khairkhahan, Bain,
Hammack
14
14 103 Khairkhahan,
Pinchuk,
Hammack
14
18 103 Khairkhahan, Bain,
Steingisser
18
19 103 Khairkhahan, Bain
Steingisser,
Staunton
19
18 103 Khairkhahan,
Pinchuk,
Steingisser
18
19 103 Khairkhahan,
Pinchuk,
Steingisser,
Staunton
19
Overall
Outcome
1, 2, 12, 14,
16–19
REVERSED