Ex Parte Dewing et al

Patent Trial and Appeal Board

Apr 11, 2013

11206656 (P.T.A.B. Apr. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WENDE L. DEWING, DALE R. ULBRICH,
and PAVANKUMAR DADLANI
____________

Appeal 2011-001491
Application 11/206,656
Technology Center 3700
____________

Before JAMES P. CALVE, WILLIAM A. CAPP, and
JILL D. HILL, Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001491
Application 11/206,656

2
STATEMENT OF THE CASE
Wende L. Dewing et al. (Appellants) appeal under 35 U.S.C. § 134
from a final rejection of claims 1, 3, 4, 7, 8, 10, 11, 14, 15, 17, 18, 21, and
22. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The claimed subject matter relates to “implantable medical device
systems and, in particular, interfaces for implantable medical device systems
that are programmable by a medical professional.” Specification, para. [2].
Claims 1, 3, 4, 7, 8, 10, 11, 14, 15, 17, 18, 21, and 22 are pending and
subject to this appeal. Claims 1, 8, 15, and 22 are independent. Claim 1 is
illustrative of the subject matter on appeal and is reproduced below with the
key disputed limitations emphasized:
1. A system capable of delivering a therapeutic
output to a patient, comprising:
an implantable medical device capable of delivering said
therapeutic output to said patient; and
a controller, programmable by a medical professional,
operatively coupled to said implantable medical device, to
specify, at least in part, said therapeutic output to be delivered
to said patient;
said controller being operable to specify said therapeutic
output through specification of a plurality of tasks and having
an interface with said medical professional;
said interface accomplishing at least one said plurality of
tasks through a series of questions and responses;
wherein said controller performs calculations in response
to said series of questions and responses in order to properly
program said implantable medical device and wherein said
controller presents a worksheet illustrating said calculations to
said medical professional;
Appeal 2011-001491
Application 11/206,656

3
wherein said series of questions and responses are
presented in clinical terms rather than engineering terms; and
wherein said controller displays to said medical
professional a percentage change of said therapeutic output as
a result of any changes made by said medical professional.
EVIDENCE
The Examiner relies on the following evidence:
Snell US 5,716,382 Feb. 10, 1998
Ramsay US 6,273,727 B1 Aug. 14, 2001
Lebel US 2002/0049480 A1 Apr. 25, 2002

REJECTIONS
Appellants seek review of the Examiner’s rejection of claims 1, 7, 8,
14, 15, 21, and 22 under 35 U.S.C. § 103(a) as unpatentable over Lebel and
Ramsay. App. Br. 14, Ans. 3. Appellants also seek review of the
Examiner’s rejection of claims 3, 4, 10, 11, 17, and 18 under 35 U.S.C.
§ 103(a) as unpatentable over Lebel, Ramsay, and Snell. App. Br. 14,
Ans. 8.
ANALYSIS
Rejection of Claims 1, 7, 8, 14, 15, 21, and 22
Regarding independent claims 1, 8, 15, and 22, the Examiner finds
that Lebel discloses the claimed system and method except for the controller
presenting calculations by illustrating them on a worksheet. The Examiner
finds that Ramsay discloses a method and a device for use by a medical
professional determining an appropriate drug dosage, including displaying
the method (i.e., the formula or calculation) used to calculate the dosage on a
worksheet to assist in detecting errors that might arise from incorrect
calculation set-ups or data entry. Ans. 4-5 (citing Ramsey, Abstract, col. 5,
Appeal 2011-001491
Application 11/206,656

4
l. 51 - col. 6, l. 30, fig. 8). The Examiner then finds that Lebel and Ramsay
are concerned with the same field of endeavor - the design of systems and
methods for external handheld medical devices operable to assist medical
professionals in delivering a therapeutic output to a patient, and concludes
that it would have been obvious to one of ordinary skill in the art at the time
of the invention to modify Lebel’s device to present calculations to a
medical professional to allow the medical professional to double check input
parameters, calculation results, and the formulas used to derive the results
for potential errors. Ans. 5.
Appellants argue that neither Lebel nor Ramsay teaches or suggests
presenting a worksheet illustrating the calculations to the medical
professional, and neither reference teaches or suggests displaying to a
medical professional a percentage change of the therapeutic output as a
result of any changes made by the medical professional. App. Br. 15-16.
Appellants note that a “percentage” is a fraction or a ratio, not a rate. Id.
(citing The American Heritage Dictionary of the English Language, Fourth
Edition, Houghton Mifflin Co. (4th ed. 2000), page 1303).
Regarding Appellants’ arguments concerning the difference between
printing a “rate” and printing the claimed “percentage change,” the
Examiner responds that it would have been obvious to one of ordinary skill
in the art to manipulate the same raw data for suitability of purpose lacking
any unexpected results or criticality, because Appellants’ claimed
“percentage change” serves no specific purpose and has no inherent
advantage. The Examiner also responds that Appellants’ percentage change
is considered non-functional printed matter that does not distinguish the
claimed product from the prior art. The Examiner concludes that there is no
Appeal 2011-001491
Application 11/206,656

5
novelty in such a subjective design choice as non-functional printed matter
on a display, particularly because Lebel displays similar information to
allow the clinician to closely follow and control therapy delivery.
In the Reply Brief, Appellants liken the Examiner’s argument to, in an
automotive example, a disclosure of a speedometer showing a rate of speed
rendering obvious a system that displays a value representative of the
vehicle's speed as a percentage of the speed limit. The relevant decision of
what to compare the vehicle's speed against, i.e., the speed limit, represents a
significant design decision that affirmatively and fundamentally impacts the
meaning of the percentage. A disclosure of a reference that showed dividing
the vehicle speed by a fixed speed reference would be fundamentally
different than a disclosure of dividing the vehicle speed by the speed limit of
the road on which the vehicle happened to be driving.
Appellants then argue that, even if it is obvious, given a disclosure of
displaying a rate, to instead display a percentage change, Lebel’s disclosure
would not teach or suggest to anyone what the percentage change should
represent, because one skilled in the art would not know what the
denominator of the percentage should be, and thus generation of any
particular percentage would have no inherent meaning relative to another
percentage. Appellants further explain that the shift from displaying a rate
to displaying a particular percentage requires at least two design steps: (1) a
person would have to recognize, by looking at a rate, that a percentage
should relevantly be displayed; (2) a person would have to recognize what
the rate should be compared against in order to obtain a relevant percentage.
We agree with the Examiner that presenting a worksheet illustrating
the calculations and displaying a percentage change of the therapeutic output
Appeal 2011-001491
Application 11/206,656

6
as a result of any changes made by the medical professional are obvious over
the teachings of Lebel and Ramsay where, for example, Lebel discloses that
the manipulation of data retrieved from the medical device may be used in
generating graphical displays of the data to help aid in the interpretation of
the data or to ascertain the effectiveness of medical devices such as glucose
sensors and a glucose pump or external pump (para. [0204]). Appellants’
invention merely performs a calculation and displays the outcome of a
calculation that could routinely be performed manually by a professional
caregiver. Once the caregiver decides what information is desired to be
calculated and displayed, accomplishing this result using conventional
computational and display technology involves no more than routine skill. It
is settled that providing an automated process to replace a manual activity
accomplishing the same result is not sufficient to distinguish an automated
process over the prior art. In re Venner, 262 F.2d 91, 95 (CCPA 1958). An
improved product in the art is obvious if that “product [is] not [one] of
innovation but of ordinary skill and common sense.” KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007). Presenting a worksheet illustrating
the calculations and displaying a percentage change are not innovative but
rather common sense, particularly where Appellants have not disclosed any
evidence of criticality or unexpected results of this feature. See Reply Br. 7;
see also Spec. paras. [18, 248, 255]. We therefore sustain the rejection of
claim 1 over Lebel and Ramsay.
Claim 7 stands or falls with claim 1. App. Br. 18. Claim 14 stands or
falls with claim 8. Id. Claim 21 stands or falls with claim 15. App. Br. 19.

Rejection of Claims 3, 4, 10, 11, 17, and 18
Appeal 2011-001491
Application 11/206,656

7
Regarding claims 3, 4, 10, 11, 17, and 18, Appellants argue that Snell
does not teach or suggest performing calculations in response to the series of
questions and presenting a worksheet illustrating the calculations to a user,
and that Snell fails to disclose displaying to a medical professional a
percentage change of the therapeutic output as a result of any changes made
by the medical professional. For the reasons set forth above with respect to
independent claims 1, 8, and 15, we sustain the rejection of claims 3, 4, 10,
11, 17, and 18.
DECISION
We AFFIRM the Examiner’s rejection of claims 1, 7, 8, 14, 15, 21,
and 22 under 35 U.S.C. § 103(a) as unpatentable over Lebel and Ramsay.
We AFFIRM the Examiner’s rejection of claims 3, 4, 10, 11, 17, and
18 under 35 U.S.C. § 103(a) as unpatentable over Lebel, Ramsay, and Snell.
AFFIRMED

mls