Ex Parte Sommer et alDownload PDFPatent Trial and Appeal BoardDec 18, 201712771217 (P.T.A.B. Dec. 18, 2017) Copy Citation 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 Copy with citationCopy as parenthetical citation