Ex Parte Chapman et al

Patent Trial and Appeal BoardSep 27, 2012

10176705 (P.T.A.B. Sep. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte FRED W. CHAPMAN, JOSEPH L. SULLIVAN, and SCOTT O. SCHWEIZER ____________________ Appeal 2010-009232 Application 10/176,705 Technology Center 3700 ____________________ Before: STEVEN D.A. MCCARTHY, BRETT C. MARTIN, and ANNETTE R. REIMERS, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009232 Application 10/176,705 2 STATEMENT OF CASE Fred W. Chapman et al. (Appellants) seek review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1, 2, 4-11, and 13-18. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellants’ claims are directed generally to “medical devices, and more particularly, to defibrillators that deliver energy to a patient.” Spec. 1:5-6. Claim 1, reproduced below with emphasis added, is illustrative of the claimed subject matter: 1. A method comprising: identifying a dosage of at least one defibrillation shock parameter selected for a patient for a pending defibrillation shock to be delivered to the patient with a defibrillator, wherein the defibrillation shock parameter is selected from the following group: energy and defibrillation current; after identifying the dosage, selecting a frequency of an excitation current as a function of the identified dosage; applying the excitation current to the patient at the selected frequency; measuring an impedance of the patient by measuring a response of the patient to application of the excitation current; delivering the defibrillation shock to the patient; and modulating the defibrillation shock based on the measured impedance to deliver the identified dosage to the patient. REFERENCE The prior art relied upon by the Examiner in rejecting the claims on appeal is: Wuthrich US 6,647,290 B2 Nov. 11, 2003 Appeal 2010-009232 Application 10/176,705 3 REJECTION The Examiner made the following rejection: Claims 1, 2, 4-11, and 13-18 stand rejected under 35 U.S.C. § 103(a) as obvious over Wuthrich. ANALYSIS Appellants challenge the rejection on numerous grounds, but the main thrust of Appellants’ various arguments centers on a disagreement over “the Examiner’s interpretation of the term ‘excitation current’ in claim 1 to be met by a defibrillation shock as described in Wuthrich.” App. Br. 7. As the Examiner correctly finds, Wuthrich teaches delivering a defibrillating shock and as part of the shock delivery, it is susceptible of use in measuring impedance of the patient. Ans. 3 (citing to Wuthrich col. 5:32-62). Wuthrich then utilizes the impedance information to adjust a subsequent defibrillation shock as desired. Id. at col. 5. Appellants argue that “claim 1 separately recites both a defibrillation shock and an excitation current, using different terms, one of ordinary skill in the art would interpret the excitation current to be something other than a defibrillation shock.” App. Br. 7. We do not find Appellants’ argument persuasive simply on the grounds of the use of two separate terms. When looking at a sequence of two defibrillating shocks, we agree with the Examiner’s general theory that the first shock can arguably be considered an excitation current and the second shock can then be considered a defibrillation shock without violating the rule that the same element cannot perform two functions. These are two discrete shocks and so, under the Examiner’s theory, it is not the case that one shock is fulfilling both of these limitations. Appeal 2010-009232 Application 10/176,705 4 The Examiner then stretches this interpretation of the claims to conclude that because Wuthrich teaches adjusting a subsequent shock based upon impedance information gained from a prior shock that it “would have been obvious to one of ordinary skill in the art at the time the invention was made to provide the step of selecting a frequency of an excitation current as a function of the identified dosage in order to provide another waveform parameter for variation in an applied current.” Ans. 5. We cannot sustain the Examiner’s conclusion of obviousness based on this interpretation. While, as noted above, we can accept the Examiner’s basic premise, we conclude that once the frequency of the recited excitation current is stated as being “a function of an identified dosage of at least one defibrillation shock parameter” that Appellants’ argument becomes stronger. Because Wuthrich teaches utilizing a defibrillating shock to obtain patient impedance and does not have a separate excitation current, which Appellants’ duly argue as noted above, we do not follow the Examiner’s conclusion that the claimed excitation current that involves “selecting a frequency” “as a function of the identified dosage” is obvious in light of Wuthrich. See App. Br. 9. As Appellants point out “Wuthrich discloses that waveform parameters are determined for a defibrillation waveform, which is then delivered and from which values indicative of impedance are sensed[,]” whereas Claim 1 “specifically requires that the excitation current is applied at a selected frequency that is selected as a function of an identified dosage.” App. Br. 11. We further agree with Appellants’ that “one of ordinary skill in the art would not have considered it obvious to have modified the device of Wuthrich to select a frequency for delivery of a defibrillation shock or shocks, much less to select the frequency as a function of a dosage for a Appeal 2010-009232 Application 10/176,705 5 pending defibrillation shock.” App. Br. 10. Accordingly, we cannot sustain the Examiner’s rejection of claim 1 and its dependent claims as obvious over Wuthrich. We conclude that the arguments with respect to claim 1 apply equally to claim 11 and its dependent claims 13-18 and reverse the rejection of those claims for the same reasons as stated above. DECISION For the above reasons, we REVERSE the Examiner’s decision to reject claims 1, 2, 4-11, and 13-18 as obvious over Wuthrich. REVERSED hh