Ex Parte Marshall et al

Patent Trial and Appeal Board

Jan 10, 2019

14519436 (P.T.A.B. Jan. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/519,436 10/21/2014
27581 7590 01/14/2019
Medtronic, Inc. (CVG)
8200 Coral Sea Street NE.
MS:MVC22
MINNEAPOLIS, MN 55112
FIRST NAMED INVENTOR
Mark T. Marshall
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.
C0007263.USU2/LG10126.L33 3417
EXAMINER
MARLEN, TAMMIE K
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
01/14/2019 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.five@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARKT. MARSHALL, JIAN CAO,
MELISSA G.T. CHRISTIE, PAUL J. DEGROOT,
VLADIMIR P. NIKOLSKI, and AMYE. THOMPSON-NAUMAN 1
Appeal2018-000674
Application 14/519,436
Technology Center 3700
Before JAMES P. CALVE, NATHAN A. ENGELS, and
ARTHUR M. PESLAK, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Office Action
finally rejecting claims 2-5, 12-14, 16, and 20. Appeal Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Medtronic, Inc. is identified as the real parties in interest (Appeal Br. 3)
and also is the Applicant pursuant to 3 7 C.F .R. § 1.46.
Appeal2018-000674
Application 14/519,436
CLAIMED SUBJECT MATTER
Claim 16, the sole independent claim, is reproduced below.
16. An implantable cardioverter-defibrillator system
compnsmg:
an implantable medical electrical lead, wherein the lead
comprises:
an elongated lead body having a distal portion and a
proximal end;
a connector at the proximal end of the lead body;
a defibrillation electrode located along the distal portion
of the lead body, wherein the defibrillation electrode includes a
first segment and a second segment proximal to the first
segment by a distance, wherein the distance between the first
segment and the second segment is between approximately 1-3
centimeters ( cm);
a first electrical conductor extending from the proximal
end of the lead body and electrically coupling to the first
segment of the defibrillation electrode;
a second electrical conductor extending from the
proximal end of the lead body and electrically coupling to the
second segment of the defibrillation electrode; and
at least one pace/sense electrode located between the first
segment and the second segment of the defibrillation electrode;
and
an implantable cardioverter-device (ICD) that includes:
a therapy module configured to generate and deliver
electrical stimulation therapy; and
a switching array configured to selectively couple the
therapy module to the first segment of the defibrillation
electrode and not the second defibrillation segment, to the
second segment of the defibrillation electrode and not the first
defibrillation segment, and to both the first and second
segments of the defibrillation electrode simultaneously.
Supp. Appeal Br., Claims App. 4 (filed Apr. 28, 2017).
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Appeal2018-000674
Application 14/519,436
REJECTION
Claims 2-5, 12-14, 16, and 20 are rejected under 35 U.S.C. § I03(a)
as unpatentable over Helland '523 (US 2002/0103523 Al, pub. Aug. 1,
2002) and Helland '289 (US 6,658,289 B2, iss. Dec. 2, 2003).
ANALYSIS
Appellant argues claims 2-5, 12, 14, 16, and 20 as a group. Appeal
Br. 2-7. We select claim 16 as representative, with claims 2-5, 12, 14, and
20 standing or falling with independent claim 16.
Claims 2-5, 12, 14, 16, and 20
The Examiner relies on Helland '523 to disclose an implantable
cardioverter-defibrillator system, as recited in claim 16, with a defibrillation
electrode including first and second segments 26/80, 25/78, first and second
electrical conductors, and pace/sense electrode 29/76, but Helland '523 lacks
a switching array that selectively couples a therapy module to either or both
of the first and second segments. Final Act. 3--4. The Examiner finds that
Helland '289 discloses a pacing and defibrillation system switching array 74
that is configured to couple therapy module 70/72/116 selectively to desired
electrodes to provide for complete electrode programmability. Id. at 4. The
Examiner determines that it would have been obvious to use Helland '289's
switching array 74 on Helland '523 to provide for the complete electrode
programmability of the device of Helland '523. Id. at 5. We agree.
"[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill." KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
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Appeal2018-000674
Application 14/519,436
Indeed, we have repeatedly held that an implicit motivation to
combine exists not only when a suggestion may be gleaned
from the prior art as a whole, but when the 'improvement' is
technology-independent and the combination of references
results in a product or process that is more desirable, for
example because it is stronger, cheaper, cleaner, faster, lighter,
smaller, more durable, or more efficient. Because the desire to
enhance commercial opportunities by improving a product or
process is universal-and even common-sensical-we have
held that there exists in these situations a motivation to combine
prior art references even absent any hint of suggestion in the
references themselves. In such situations, the proper question is
whether the ordinary artisan possesses knowledge and skills
rendering him capable of combining the prior art references.
DyStar Textilfarben GmbH & Co. Deutsch/and KG v. CH Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006).
We agree with Appellant that Helland '523 teaches that defibrillation
electrode portions 25, 26/78, 80/116, 118 are electrically coupled together
but electrically isolated from pacing electrode 29/7 6/114 that are positioned
between each pair of electrode portions. Appeal Br. 6-9; Reply Br. 5---6.
However, we do not agree with Appellant that this configuration precludes
or undermines the Examiner's proposal to modify Helland '523 with the
switching array 74 of Helland '289 to provide for the complete electrode
programmability of Helland '523's device based on Helland '289's teaching
of the advantages of doing so for a defibrillator.
Helland '523 teaches to couple defibrillation electrodes together with
switches "in a manner known in the art." Helland '523 ,r 41. Helland '289
teaches a known switching array 7 4 that provides "complete electrode
programmability" by selectively closing the appropriate switches in various
different combinations. Helland '523, 7:5-12, Fig. 3; Ans. 5.
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Appeal2018-000674
Application 14/519,436
Helland '523 's defibrillation electrode portions are coupled together
primarily so they are isolated electrically from the pacing electrodes, which
are positioned between the electrode portions to support sensing of cardiac
activity of the heart and the delivery of pacing stimulation pulses. Helland
'523 ,r,r 29, 30, 32, 34, 36. However, Helland '523 teaches that the pacing
and defibrillation electrode portions may be coupled together when the
device is used to provide the defibrillating energy and "a comparatively high
voltage defibrillation voltage is applied." Id. ,r,r 15, 41, Fig. 7.
Thus, Helland '523 teaches to couple electrically-isolated electrodes
together to provide a higher defibrillation voltage. The Examiner proposes
to use Helland '289's switching array 74 in Helland '523 for this purpose
and to electrically couple the defibrillation electrode portions and pacing
electrodes in different combinations, as desired, to provide the advantages
suggested by Helland '289, e.g., different stimulation pulses to improve the
versatility and efficiency of Helland '523 using a known switching array.
See KSR, 550 U.S. at 421 ( explaining that a person of ordinary skill is a
person of ordinary creativity); DyStar, 464 F.3d at 1368.
Helland '523 itself teaches such versatility by teaching defibrillation
electrode portions formed as coils 25, 26/78, 80 of coiled wire (Figs. 1, 3)
and as groups 116, 118 of ring electrodes (Fig. 4). Helland '523 ,r,r 29, 36.
Helland '523 also teaches the use of separate conductors 87, 89 coupled in
parallel and connected to left ventricular defibrillation electrode 74, which
comprises first and second coil electrode portions 78, 80. Id. ,r 39, Figs. 3, 6,
7; Ans. 5---6. Because the current for such a parallel circuit is the sum of the
currents through each conductor, a skilled artisan would appreciate that this
circuit increases the defibrillation pulse delivered to the left ventricle.
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Appeal2018-000674
Application 14/519,436
Helland '523 teaches that arranging defibrillation electrodes in two
portions within the left ventricle enables left ventricular defibrillation across
as much of the ventricular myocardium as possible and also positions the
pacing electrode in a more optimal position. See Helland '523 ,r,r 6-10.
Helland '523 teaches pacing and defibrillation electrode portions in
different arrangements with switching components with a switching control
that uses the defibrillation electrodes without the pacing electrode, uses the
pacing electrode without the defibrillation electrodes, or uses both the
defibrillation and pacing electrodes together. Ans. 5; Helland '523 ,r 41.
Furthermore, Helland '523 teaches "splitting the defibrillation electrode into
electrically coupled portions and locating the pacing electrode between the
split defibrillation electrodes" (Helland '523 ,r 42), isolating the pacing
electrode from the defibrillation electrode, or, more generally, "selectively"
coupling the electrodes "in a manner known in the art" (id. at ,r 41 ). The
Examiner correctly finds that Helland '289 teaches a known switching array
that would have made Helland '523 's device more versatile and efficient.
The Examiner reasonably concludes that these teaching and Helland
'289's teaching of switching array 74 configured to selectively couple a
therapy module to desired electrodes would have been obvious to combine
to provide complete electrode programmability to Helland '523. Ans. 5. In
this regard, Helland '298 touts its switching array as providing a universal
pacing and defibrillation system capable of pacing and defibrillating all four
heart chambers without the need for an inordinate number of pacing and
defibrillation electrodes to be used in the heart. Helland '289, 1 :5-2:65.
Thus, we sustain the rejection ofclaim 16 and claims 2-5, 12, 14, and
20, which fall therewith.
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Appeal2018-000674
Application 14/519,436
Claim 13
Claim 13 depends from claim 16 and recites the pace/sense electrode
as comprising a coil electrode. The Examiner cites paragraph 27 of Helland
'523 for this feature. Final Act. 6. We agree with Appellants that paragraph
27 does not describe a pacing electrode as a coil electrode. Appeal Br. 13.
Instead, paragraph 27 describes right ventricular lead 30 as including coil
electrodes 36, 38 and tip electrode 32 to provide pacing and shock therapy.
It is not clear that coil electrodes 36, 38 deliver pacing therapy.
Paragraph 26 describes right atrial lead 20 as including atrial tip electrode
22, which senses cardiac signals in the right atrium and delivers right atrial
chamber pacing stimulation. There is no indication that tip electrode 22 is a
coil electrode, however. Helland '523 describes defibrillation electrode
portions 25, 26 as coil electrodes formed of coiled wire, but does not
describe pacing electrodes 27, 29 as coil electrodes. Helland '523 ,r 29.
However, Helland '523 also discloses stylet coil 81 that is connected
to left ventricular pacing electrode 76. Id. ,r 39. The Examiner reasonably
finds that stylet coil 81 is a coil electrode because it comprises a length of
wire wound as a sequence of coiled rings. Ans. 7. Helland '523 illustrates
pacing electrode 7 6 located between first and second defibrillation electrode
segments 78, 80 (Fig. 3), and stylet coil 81 formed as a wire coil (Fig. 6) for
pacing electrode 7 6, as claimed.
In response, Appellants argue that the Examiner's interpretation is not
reasonable. Reply Br. 9. However, Appellants do not identify any language
in claim 13 or any disclosure in the Specification that is inconsistent with the
Examiner's interpretation or findings. Id. Thus, we are not apprised of
Examiner error. Accordingly, we sustain the rejection of claim 13.
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Appeal2018-000674
Application 14/519,436
DECISION
We affirm the rejection of claims 2-5, 12-14, 16, and 20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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