Ex Parte Mitrani et al

Patent Trial and Appeal Board

Apr 18, 2013

11037123 (P.T.A.B. Apr. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RAUL D. MITRANI, PETER P. TARJAN, and
JEFFREY M. GILLBERG
____________________

Appeal 2011-002266
Application 11/037,123
Technology Center 3700
____________________

Before: WILLIAM V. SAINDON, WILLIAM A. CAPP, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1-6, 8-16, 18, and 19. Claims 7 and 17 are
objected to as being dependent upon a rejected base claim. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION.

CLAIMED SUBJECT MATTER
Claims 1, 10, and 19 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A medical device adapted to detect arrhythmias in a
patient having a thoracic cavity containing a heart generating a
cardiac signal comprising a plurality of cardiac events,
comprising:
a plurality of electrodes positionable subcutaneously
within the patient and outside of the thoracic cavity sensing the
cardiac signal;
a microprocessor, coupled to the plurality of electrodes,
identifying:
a sequence by which individual ones of the plurality of
electrodes sense individual ones of the plurality of cardiac
events; and
a duration between sensing by individual ones of the
plurality of electrodes of an individual one of the plurality of
cardiac events of the cardiac signal; and
control circuitry delivering a therapy in response to one
of the sequence and the duration.

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REJECTIONS
1. Claims 1, 9, 10, 18, and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wagner (US 2004/0220633 A1; pub. Nov. 4, 2004)
and Steglich (US 2001/0005792 A1; pub. Jun. 28, 2001);
2. Claims 2, 4-6, 8, 10-12, and 14-16 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Wagner, Steglich, and Bardy (US
5,257,621; iss. Nov. 2, 1993); and
3. Claims 3 and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wagner, Steglich, and Stotts (US 5,161,529; iss. Nov. 10,
1992).

OPINION
Claims 1, 9, 10, 18, and 19
Appellants argue claims 1, 9, 10, 18, and 19 as a group. See App. Br.
12-16. We select independent claim 1 as the representative claim. Claims 9,
10, 18, and 19 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011). Claim 1 is directed to a medical device including a microprocessor
that identifies “a sequence by which individual ones of the plurality of
electrodes sense individual ones of the plurality of cardiac events,” “a
duration between sensing by individual ones of the plurality of electrodes of
an individual one of the plurality of cardiac events of the cardiac signal,”
and “control circuitry delivering a therapy in response to one of the sequence
and the duration.”
The Examiner finds that Wagner teaches each of the features of
claim 1 except identifying a duration between sensing. Ans. 3-4. The
Examiner finds that Steglich teaches identifying the duration between
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sensing and reasons that “it would have been obvious . . . to modify the
device of Wagner by adding time delay duration . . . to facilitate . . . the
direction of the propagation to be determined allowing for the sequence of
arrival to be measured.” Ans. 4.
Appellants contend that Wagner does not teach identifying the
sequence or duration as claimed and also does not teach delivering a therapy
in response to one of the sequence and the duration. App. Br. 12.
Appellants argue that the sensed activation sequence discussed in Wagner is
the activation sequence of cardiac cells sensed over the electrodes rather
than the sequence in which the electrodes detect a cardiac signal. App. Br.
12-13; Reply Br. 6-7. Appellants specifically explain that “[a] sensed
activation sequence may be sequential sensing of particular and specific
aspects of cardiac depolarization by one electrode but not the other, with the
composite between the electrodes combined later to diagnose an arrhythmia,
as detailed in paragraph [0071].” App. Br. 13. Appellants’ arguments are
not persuasive.
Appellants have not pointed to any convincing evidence that Wagner
does not describe the claimed activation sequence. Paragraph [0043] of
Wagner (relied on by the Examiner) indicates that “[t]he processor may
detect arrhythmias using one or more sensed activation sequences over the
two or more electrodes” and “[t]he activation sequences may contain
information sufficient to detect or discriminate cardiac arrhythmias.”
Paragraph [0071] of Wagner (relied on by Appellants) simply discusses
signal separation to discriminate a signal of interest from the separated
signals and does not support Appellants’ contention that the sequence
described in paragraph [0043] of Wagner is the sequential sensing of cardiac
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depolarization by one electrode but not the other, rather than the sensed
activation sequence of the electrodes themselves. Accordingly, the
Examiner’s finding that Wagner describes activation sequences as sequences
in which the electrodes detect a cardiac signal is supported by the
preponderance of the evidence.
With regard to Appellants’ contention that Wagner does not teach the
claimed duration, we note that this argument does not apprise us of
Examiner error because the Examiner does not rely on Wagner for such
teaching. See Ans. 4. Finally, Appellants’ argument that Wagner does not
teach the claimed therapy delivery in response to one of the sequence and
the duration is unconvincing because the argument is based on Appellants’
contention that Wagner does not teach the claimed sequence and duration
identification, which we found unpersuasive for the reasons set forth above.
Thus, we are not apprised of Examiner error.
Appellants further argue that Steglich does not teach delivering
therapy in response to a sequence or duration. App. Br. 13-14; Reply Br. 7.
However, the Examiner does not rely on Steglich teaching the claimed
delivery. Thus, this argument does not apprise us of Examiner error.
For the reasons set forth above, we sustain the rejection of claims 1, 9,
10, 18, and 19.

New Ground of Rejection – Claims 2, 4, 5, 12, 14, and 15
Claims 2 and 12
Claim 2 depends from claim 1 and claim 12 depends from claim 10.
Claims 2 and 12 each recite determining “occurrences of differences in
durations associated with the first moments of activation and the second
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moments of activation.” Nothing in claims 2 and 12 requires the claimed
“durations” to be defined the same as the “duration” recited in claims 1 and
10. Based on the language of claims 2 and 12, it is unclear whether the
“durations” are the time a single cardiac event lasts or the time from one
cardiac event to the next. Appellants offer a third proposed claim
construction, explaining that the claimed “durations” are “the duration
between the same heartbeat by different electrodes,” not the duration of
heartbeats. App. Br. 18. Thus, at least two plausible claim constructions
exist.
“[I]f a claim is amenable to two or more plausible claim constructions,
the USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim . . .
indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential). Accordingly, and pursuant to our authority under 37 C.F.R.
§ 41.50(b), we enter a NEW GROUND OF REJECTION against claims 2
and 12 under 35 U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the subject matter which
Appellants regard as the invention.

Claims 4 and 14
Claims 4 and 14 each recite determining whether the sequence and the
duration “are substantially consistent.” However, claims 4 and 14 could be
read to require the sequence and the duration to be consistent relative to one
another, relative to another sequence or duration, or relative to some
predetermined value. Thus, multiple plausible claim constructions exist,
making the claims indefinite. Accordingly, and pursuant to our authority
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under 37 C.F.R. § 41.50(b), we enter a NEW GROUND OF REJECTION
against claims 4 and 14 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which Appellants regard as the invention.

Claims 5 and 15
Claims 5 and 15 each recite comparing “a change in the duration
between cardiac events to a predetermined threshold.” Nothing in claims 5
and 15 requires the claimed “duration” to be defined the same as the
“duration” recited in claims 1 and 10. Based on the language of claims 5
and 15, it is unclear if the “duration” is the time a single cardiac event lasts
or the time from one cardiac event to the next. Appellants offer a third
proposed claim construction with the “duration” being “the duration between
sensing by the electrodes of each beat, not a duration between beats.” App.
Br. 20. Thus, at least two plausible claim constructions exist, making the
claims indefinite. Accordingly, and pursuant to our authority under 37
C.F.R. § 41.50(b), we enter a NEW GROUND OF REJECTION against
claims 5 and 15 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which Appellants regard as the invention.

Claims 2, 4-6, 8, 10-12, and 14-16
Claims 2, 4, 5, 12, 14, and 15
Because we found that claims 2, 4, 5, 12, 14, and 15 are indefinite, a
determination of the scope of these claims would require us to resort to
considerable speculation as to the meaning of the terms employed and
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assumptions as to the scope of the claims. Therefore, any determination on
the merits of the Examiner’s rejection of claims 2, 4, 5, 12, 14, and 15 is
imprudent. See In re Steele, 305 F.2d 859, 862 (CCPA 1962). As such, we
are constrained to reverse, pro forma, the Examiner’s rejection of claims 2,
4, 5, 12, 14, and 15 under 35 U.S.C. § 103(a) as being unpatentable over
Wagner, Steglich, and Bardy. We hasten to add that this is a procedural
reversal rather than one based upon the merits of the rejections.
Claims 6, 8, 11, and 16
Claims 6, 8, 11, and 16 depend from claim 1 or 10 and are not argued
separately. See App. Br. 16-22. Accordingly, we sustain the rejection of
claims 6, 8, 11, and 16 for the reasons set forth above regarding claims 1 and
10.

Claims 3 and 13
Appellants do not contest the Examiner’s findings or the rationale for
the modifications proposed by the Examiner in the rejection of claims 3 and
13. See App. Br. 22. Rather, Appellants again argue that Wagner and
Steglich do not teach the features found in claims 1 and 10 and additionally
argue that Stotts also fails to teach the features of claims 1 and 10. This
argument does not apprise us of Examiner error because the Examiner does
not rely on Stotts as teaching the features recited in claims 1 and 10. Thus,
we sustain the rejection of claims 3 and 13.

DECISION
We AFFIRM the Examiner’s decision to reject claims 1, 3, 6, 8-11,
13, 16, 18, and 19.
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We REVERSE, pro forma, the Examiner’s decision to reject claims 2,
4, 5, 12, 14, and 15.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW
GROUND OF REJECTION of claims 2, 4, 5, 12, 14, and 15 under 35
U.S.C. § 112, second paragraph.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) 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) also provides that the Appellants, 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. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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