Medtronic, Inc.

Patent Trials and Appeals Board

Feb 11, 2022

2021003897 (P.T.A.B. Feb. 11, 2022)

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. 15/964,355 04/27/2018 Eric D. CORNDORF C0015536.USU1/ LG10126.L33 2000 27581 7590 02/11/2022 Medtronic, Inc. 710 Medtronic Parkway NE MINNEAPOLIS, MN 55432 EXAMINER DINGA, ROLAND ART UNIT PAPER NUMBER 3792 NOTIFICATION DATE DELIVERY MODE 02/11/2022 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 rs.patents.four@medtronic.com rs.patents.three@medtronic.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ERIC D. CORNDORF and ROBERT T. SAWCHUK Appeal 2021-003897 Application 15/964,355 Technology Center 3700 ____________ Before CHARLES N. GREENHUT, MICHAEL J. FITZPATRICK, and WILLIAM A. CAPP, Administrative Patent Judges. FITZPATRICK, Administrative Patent Judge. DECISION ON APPEAL Appellant, Medtronic Inc.,1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1-3, 5-12, 14-18, 20-27, and 29- 31. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE The Specification The Specification disclose “a medical device and method for charge balancing electrical stimulation pulses delivered to a patient, such as cardiac pacing pulses.” Spec. ¶1. 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42 and identifies itself as sole the real party in interest. Appeal Br. 3. Appeal 2021-003897 Application 15/964,355 2 The Claims Claims 1-3, 5-12, 14-18, 20-27, and 29-31 are rejected. Final Act. 1. Claims 4, 13, 19, and 28 are objected to. Id. No other claims are pending. Id. Claims 1, 16, and 31 are independent. Appeal Br. 19, 21-22, and 24. Claim 1 is directed to a medical device, claim 16 is directed to a method, and claim 31 is directed to instructions for a control circuit for a medical device. Id. The subject matter of these claims is otherwise quite similar. Id. Claim 1 is representative and reproduced below. 1. A medical device comprising: a therapy delivery circuit comprising a pulse generator configured to generate and deliver electrical stimulation pulses via electrodes coupleable to the therapy delivery circuit; and a control circuit coupled to the therapy delivery circuit and configured to control the therapy delivery circuit to: deliver a plurality of electrical stimulation pulses comprising at least one first pulse having a first polarity and at least one second pulse having a second polarity opposing the first polarity, the at least one first pulse and the at least one second pulse of the plurality of electrical stimulation pulses being charge imbalanced pulses delivering a net electrical charge; and deliver a charge balancing pulse by modifying every nth pulse of the plurality of electrical stimulation pulses to reduce the net electrical charge delivered over the plurality of electrical stimulation pulses. Id. at 19. Appeal 2021-003897 Application 15/964,355 3 The Examiner’s Rejections The following rejections are before us: 1. claims 1-3, 5-12, 15-18, 20-27, 30, and 31, under 35 U.S.C. § 102(a)(1), as anticipated by US 2009/0270943 A1, published Oct. 29, 2009 (“Maschino”) (Final Act. 2); and 2. claims 14 and 29, under 35 U.S.C. § 103, as unpatentable over Maschino and US 2017/0157413 A1, published June 8, 2017 (“Anderson”). (Final Act. 7). DISCUSSION Rejection 1-Anticipation The Examiner finds that the first “deliver[]” limitation of claims 1, 16, and 23 is disclosed in paragraph 38 of Maschino. See Final Act. 3 (“Paragraph [0038] of Maschino discloses delivering a biphasic, charge balanced electrical signal to the electrodes to reduce residual electrical charge at the electrodes.”). We agree with and adopt this finding. See Maschino ¶38 (“For a biphasic stimulus output, the charge at the electrodes can be balanced by reversing the current at the end of the first pulse so that the polarity of the second pulse is opposite that of the first pulse and the net charge is reduced to substantially zero.”). The Examiner finds that the second “deliver[]” limitation of claims 1, 16, and 23 is disclosed in paragraph 40 of Maschino. See id. (“Paragraph [0040] of Maschino disclose that in addition to the biphasic stimulation, the pulse generator can deliver a charge balancing pulse at the end of the high frequency burst . . . to reduce the net electrical charge delivered over the stimulation pulses.”). Appellant disputes this finding. See, e.g., Appeal Br. 8 (“Maschino never addresses a net electrical charge after delivering a Appeal 2021-003897 Application 15/964,355 4 biphasic pulse that would require delivering another charge balancing pulse by modifying an nth pulse.”). This is so, Appellant argues, because the “charge balancing pulse” disclosed in paragraph 40 of Maschino, and relied on by the Examiner as the nth pulse, is not described as following a plurality of pulses of opposing polarity. Id. at 9. Appellant is correct. Maschino states that the charge balancing pulse may follow a “high frequency burst” of “stimulation pulses,” but does not disclose that the stimulation pulses in the high frequency burst are of opposing polarity. Maschino ¶40. It is not enough that Maschino elsewhere (i.e., in paragraph 38) discloses a plurality of pulses of opposing polarity. For Maschino to anticipate, it must disclose all limitations of the claim together as arranged in the claim. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (“[U]nless a prior art reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.”). The Examiner has not shown that it does. For this reason, we reverse the rejection of independent claims 1, 16, and 31, as well as that of dependent claims 2, 3, 5-12, 15, 17, 18, 20-27, and 30. Rejection 2-Obviousness In this rejection of dependent claims 14 and 29, the Examiner relies on a second reference, Anderson, for teaching the additional limitations recited therein. Final Act. 7. The Examiner does not rely on Anderson in a manner that could cure the deficiency in the anticipation rejection of Appeal 2021-003897 Application 15/964,355 5 claims 1 and 16, from which claims 14 and 29 respectively depend. Thus, we reverse the rejection of claims 14 and 29. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3, 5-12, 15-18, 20- 27, 30, 31 102(a)(1) Maschino 1-3, 5-12, 15-18, 20- 27, 30, 31 14, 29 103 Maschino, Anderson 14, 29 Overall Outcome 1-3, 5-12, 14-18, 20- 27, 29-31 REVERSED