Ex Parte Sommer et al

Patent Trial and Appeal Board

Dec 18, 2017

12771217 (P.T.A.B. Dec. 18, 2017)

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.
12/771,217 04/30/2010 John Louis Sommer P0034496.01/LG10126 1231
27581 7590
Medtronic, Inc. (CRDM)
710 MEDTRONIC PARKWAY NE
MS: LC340 Legal Patents
MINNEAPOLIS, MN 55432-9924
EXAMINER
KAHELIN, MICHAEL WILLIAM
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
12/20/2017 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):
medtronic_crdm_docketing @ c ardinal-ip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN LOUIS SOMMER, SCOTT J. BRABEC,
JON FREDRIC URBAN, YONG-FU XIAO, and
XIAOHONG ZHOU
Appeal 2015-006198
Application 12/771,217
Technology Center 3700
Before STEVEN D. A. MCCARTHY, ANNETTE R. REIMERS, and
GORDON D. KINDER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Appellants1 have requested a rehearing under 37 CFR § 41.52 in
response to the Decision of the Board mailed October 3, 2017 (hereinafter
“Decision”). Requests for rehearing are limited to matters overlooked or
misapprehended by a Panel in rendering a decision. See 37 CFR § 41.52. In
1 We are informed that the real party in interest is Medtronic, Inc. Appeal
Br. 3 (filed Dec. 29, 2014).
Appeal 2015-006198
Application 12/771,217
the Decision, we affirmed the rejection of claims 14, 16, and 18—24 as
anticipated by Levin et al. (US 2008/0077187 Al, pub. Mar. 27, 2008,
hereinafter “Levin”). Appellants, in their request for rehearing, filed
November 29, 2017 (hereinafter “Request”), fail to apprise us of matters we
overlooked or misapprehended.
Appellants’ Request is therefore DENIED.
ANALYSIS
The Request contends that the Board entered a new ground of
rejection without designating it as such. Request 2—3. The Request also
includes a response to the hypothesized new ground of rejection. Request 3—
5.
The Request concedes that the Examiner and the Board relied on the
same text in Levin: “The text [from Levin] relied upon by both the Board
and the Examiner merely states that the pacing pulse should occur after the
R-wave and before the T-wave of the ECG.” Request 2 (quoting without
citing Levin 199).2 Appellants then argue, as they did on appeal, that Levin
does not necessarily determine an R-T window because Levin describes
using an adjustable delay after the R-wave. Compare Request 2—3 with
Appeal Br. 6—8 and Reply Brief 4 (“Levin discloses the existence of this
‘window of opportunity’ and how to determine its boundaries. This,
however is different from actually disclosing that the device defines the
window or has a mechanism for doing so.”). Confident in the correctness of
2 The Board’s consideration of Appellants’ Request is hampered by the
failure of the Request to cite to any legal authority or to any portion of the
record. In this way, the Request fails to state with particularity any matter
the Board overlooked or misapprehended.
2
Appeal 2015-006198
Application 12/771,217
this position, Appellants conclude that the Board must have intended to find
that Levin rendered the claimed subject matter obvious rather than
identically disclosed. Request 3 (“The following assumes the Board
intended to find that modifying Levin to define an R-wave to a T-wave
window is obvious, rather than inherently (necessarily) part of the device as
disclosed.”).3
A request for rehearing is not an opportunity to reargue points merely
because Appellants do not agree with the result of the Board’s Decision.
Moreover, a request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the Board. 37
C.F.R. § 41.52(a)(1). While couched as asserting that the Board relied on a
new ground of rejection, beyond repeating the arguments made on appeal,
the Request does not state with particularity facts or findings by the
Examiner or the Board to support its position. Accordingly, we do not agree
that the Board entered sub silentio a new ground of rejection.
Appellants’ Request sets up a strawman and asks the Board to endorse
it.
If the Board actually is of the opinion that the cited text
means that the Levin device as disclosed necessarily defines the
claimed window, [Appellants] will have no alternative but to
take the case up further on Appeal. If that is the case, in
3 Appellants also mention, without supporting argument and as they did in
their Appeal Brief, that Levin does not explain how to achieve the claimed
timing from both the atrial and ventricular events. Compare Request 2 with
Appeal Br. 7. Appellants’ Specification concedes that the hardware used for
providing the claimed pulses and controlling their timing is well known.
Spec. 10:24—30. This concession puts how to execute Levin’s stimulating
pulses automatically well within the level of ordinary skill in the art.
3
Appeal 2015-006198
Application 12/771,217
responding to this request, [Appellants] hope[] the Board will
unambiguously so state.
However, the wording of the Decision leads [Appellants]
to believe that what the Board intended was to state that the
cited text makes it obvious under section 103 to modify the
disclosed device of Levin to also define an R wave to T-wave
window.
We do not agree with Appellants’ understanding of Levin. In pertinent part
Levin states:
This delay can be adjusted by the physician by reprogramming the
pacemaker or automatically corrected based on the patient’s heart rate.
In most general terms pacing should occur after the R wave and
before the T wave of the ECG 603.
Levin 199. The Examiner found “[i]n paragraph 0099 Levin further
discloses how one would use different fiducial points of the acquired
waveform to define this window.” Advisory Act 2; see also Examiner’s
Answer 2-4. We wrote in our Decision, “[w]e take this [quoted passage
from Levin 199] as a specific teaching in Levin that the therapeutic pulse
can be automatically adjusted to occur after one point on the heartbeat cycle
and before another, and those points define the claimed window.”
Decision 4. Thus, the Decision finds Levin anticipates the claims at issue
and does so relying on the same part of the Levin reference on which the
Examiner relied.4
4 Nothing in this opinion is intended as criticism of the merits of the
obviousness theory the Appellants seek to attribute to us. In the event of
further prosecution, the Examiner may consider not only the express and
inherent teachings of Levin, but also obvious variations based on the
teachings of Levin, in assessing whether the subject matter of claims
presented by Appellants may be patentable.
4
Appeal 2015-006198
Application 12/771,217
As the Decision does not state a new ground of rejection, Appellants
do not state with particularity any matter that the Board overlooked or
misapprehended, as required by 37 C.F.R. §41.52(a)(1). Indeed, Appellants’
request cannot do so because, as discussed above, it is merely asking the
Board to repeat consideration of the same issue presented by its Appeal
Brief and Reply Brief and decided against Appellants.
Not finding a new ground of rejection to have been entered, we need
not consider the second part of Appellants’ Request.
DECISION
Appellants’ Request for Rehearing is denied.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
DENIED
5