Ex Parte Bossoney et al

Patent Trial and Appeal Board

Jun 30, 2014

12254405 (P.T.A.B. Jun. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte LUC BOSSONEY,
BENITO VALENCIA AVILA, and BLAISE PARATTE
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Appeal 2012-010119
Application 12/254,405
Technology Center 2800
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Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL
On April 29, 2011, the Examiner finally rejected claims 1-32 of
Application 12/254,405 under 35 U.S.C. § 102(b) as anticipated or under 35
U.S.C. § 103(a) as obvious. Appellants1 seek reversal of these rejections
pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
For the reasons set forth below, we REVERSE.

1 Codman & Shurtleff, Inc., which is an affiliate of Johnson & Johnson, is
identified as the real party in interest. (App. Br. 1.)
Appeal 2012-010119
Application 12/254,405
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BACKGROUND
The ’405 Application describes a magnetic key access control system
for medical equipment. Spec. 1. Claim 1 is representative of the ’405
Application’s claims and is reproduced below:
1. An access system for controlling access of a user to one
of at least two unique operative modes of an electronic device
for communicating with an implantable medical device, said
access system comprising:
a portable keycard of said user having at least a first magnet
embedded therein, said first magnet being located at a first
predetermined location within said keycard;
an electronic device comprising:
a housing having an external surface and an interior
chamber, said external surface including a channel which
is sized and shaped to selectively receive said keycard to
a fully inserted position;
a sensing circuit disposed within said interior chamber,
said sensing circuit including a first Hall-effect
transducer positioned adjacent to said channel so that
said first magnet of said keycard aligns with said first
Hall-effect transducer when said keycard is located at
said fully inserted position within said channel, at which
point said first Hall-effect transducer generates a first
output signal; and
a processing circuit disposed within said interior
chamber, said processing circuit being electrically
connected to said sensing circuit and said processing
circuit allowing said user access to said one of at least
two unique operative modes in response to receipt of said
first output signal.
(App. Br. 11 (Claims App’x).)
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REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 4-16, and 19-30 are rejected under 35 U.S.C. § 102(b) as
anticipated by Varvel.2 (Ans. 4.)
2. Claims 2, 3, 17, and 18 are rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Varvel and Horvath.3 (Ans. 9.)
3. Claims 31 and 32 are rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Varvel and Schasser.4 (Ans. 11.)
DISCUSSION
Rejection 1. Appellants argue for reversal of this rejection based
upon the limitations of independent claims 1 and 16. Accordingly, we will
limit our discussion to these claims. Dependent claims 4-15 will stand or
fall with claim 1, and dependent claims 19-30 will stand or fall with claim
16. 37 C.F.R. § 41.37(c)(1)(vii) (2010).
Claim 1. We may resolve Appellants’ appeal of the rejection of this
claim by addressing a single question: Did the Examiner reversibly err in
finding that Varvel describes “a processing circuit . . . allowing said user
access to said one of at least two unique operative modes in response to
receipt of said first output signal” as recited in claim 1? Because we answer
this question in the affirmative, we reverse the Examiner’s rejection of claim
1 as anticipated by Varvel.

2 US Patent No. 4,112,292, issued Sept. 5, 1978.
3 US Patent No. 3,953,712, issued April 27, 1976.
4 US Patent No. 4,213,039, issued July 15, 1980.
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Application 12/254,405
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Appellants’ argument regarding the processing circuit limitation in
claim 1 depends upon the interpretation of the phrase “one of at least two
unique operative modes.” See Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d
1331, 1339 (Fed. Cir. 2003) (explaining that an anticipation analysis requires
comparison of properly construed claims to the prior art).
In particular, we must determine whether claim 1’s preamble recites
positive limitations on the claim’s scope. The default presumption is that a
claim’s preamble is not limiting. Am. Med. Sys., Inc. v. Biolitec, Inc., 618
F.3d 1354, 1358 (Fed. Cir. 2010). If, however, the preamble recites essential
structure, essential steps, or is “‘necessary to give life, meaning, and
vitality’” to the claim, the preamble limits the claim’s scope. Pitney Bowes,
Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999).
In this case, claim 1’s preamble provides the antecedent basis for the
phrase “one of at least two unique operative modes” used in the body of the
claim. Therefore, the preamble is limiting, and further specifies that the
claimed operative modes are “operative modes of an electronic device for
communicating with an implantable medical device.”
Anticipation requires the Examiner to show that all of the claim’s
elements are described within the four corners of a reference—either
expressly or inherently—in a manner enabling an artisan of ordinary skill in
the relevant art to practice the claimed invention without undue
experimentation. ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d
1340, 1344 (Fed. Cir. 2012).
In this case, the Examiner found that Varvel described the claimed
processing circuit. (Ans. 5 (citing Varvel col. 1, ll. 11-16; col. 2, l. 56-col. 3,
l. 2; col. 6, ll. 39-46).) The cited portions of Varvel, however, describe the
use of Varvel’s apparatus in magnetic locking systems and credit control
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systems. Varvel, col. 1, ll. 11-16; col. 6, ll. 39-46. Varvel further states that
the output of its card reader “may be used to initiate various functions
depending on the particular application of the system” of which it is a part.5
Id. at col. 2, l. 68-col. 3, l. 2. Neither the Examiner’s stated ground of
rejection nor the Response to Argument portion of the Answer identify any
description of an electronic device for communicating with an implantable
medical device. Accordingly, we reverse the rejection of claim 1 as
anticipated by Varvel.
Claim 16. The electronic control device encompassed by claim 16
comprises “a processing circuit . . . allowing said control device to operate in
one of said at least two unique modes of operation in response to receipt of
said first output signal.” For essentially the same reasons as discussed in
connection with the analogous limitation in claim 1, we conclude that claim
16’s preamble recites positive limitations. Therefore, the claimed processing
circuit must allow a control device for communicating with an implantable
medical device to operate one of at least two unique modes of operation in
response to an output signal from the claimed sensing circuit. As discussed
above, Varvel does not describe such a processing circuit. We, therefore,
reverse the rejection of claim 16 as anticipated by Varvel.
Rejections 2 and 3. In formulating these rejections, the Examiner
relied upon the finding that Varvel described the processing circuit recited in
independent claims 1 and 16. The Examiner did not explain how or why
Varvel would have suggested the processing circuit of claim 1 or of claim 16

5 We express no opinion on what this portion of Varvel might have
suggested to a skilled artisan at the time of the invention.
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Application 12/254,405
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to a person of ordinary skill in the art. Nor did the Examiner find that either
Horvath or Schasser—whether alone or in combination with Varvel—either
described or suggested these processing circuits to a skilled artisan. We,
therefore, are constrained to reverse the rejection of claims 2, 3, 17, and 18
as obvious over the combination of Varvel and Horvath and of claims 31 and
32 as obvious over the combination of Varvel and Schasser.
CONCLUSION
For the foregoing reasons, we reverse (1) the rejection of claims 1, 4-
16, and 19-30 as anticipated by Varvel, (2) the rejection of claims 2, 3, 17,
and 18 as obvious over combination of Varvel and Horvath and (3) the
rejection of claims 31 and 32 as obvious over the combination of Varvel and
Schasser.
REVERSED

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