Ex Parte Marshall et alDownload PDFPatent Trials and Appeals BoardJan 10, 201914519436 - (D) (P.T.A.B. Jan. 10, 2019) Copy Citation 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). 2 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). 3 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. 4 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. 5 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. 6 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. 7 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 8 Copy with citationCopy as parenthetical citation