Ex Parte Nolan et al

Patent Trial and Appeal Board

Mar 23, 2016

12127404 (P.T.A.B. Mar. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/127,404 05/27/2008
71996 7590 03/25/2016
SHUMAKER & SIEFFERT, P.A
1625 RADIO DRIVE, SUITE 300
WOODBURY, MN 55125
FIRST NAMED INVENTOR
Joseph J. Nolan
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1023-770US01 8401
EXAMINER
ALTER MORSCHAUSER, ALYSSA MARGO
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
03/25/2016 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):
pairdocketing@ssiplaw.com
medtronic _neuro _ docketing@cardinal-ip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH J. NOLAN and ANDREW H. HOUCHINS
Appeal2014-003321
Application 12/127,404
Technology Center 3700
Before CYNTHIA L. MURPHY, BRUCE T. WIEDER, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-22 under 35 U.S.C. § 103(a) as unpatentable over
Nelson,3 Thompson,4 and Zilberman. 5 We have jurisdiction under
35 U.S.C. § 6(b).
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
June 17, 2013), Reply Brief ("Reply Br.," filed Jan. 24, 2014), the
Examiner's Answer ("Ans.," mailed Nov. 26, 2013), and the Final Office
Action ("Final Act.," mailed Jan. 17, 2013).
2 Appellants identify the real party in interest as Medtronic, Inc. App. Br. 3.
3 Nelson et al., US 2002/0072785 Al, published June 13, 2002.
4 Thompson et al., US 2004/0064166 Al, published April 1, 2004.
5 Zilberman et al., US 5,824,022, issued October 20, 1998.
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Application 12/127,404
We AFFIRM.
STATEMENT OF THE DECISION
CLAIMED INVENTION
Appellants' invention "relates to medical devices and, more
particularly, to medical device communication." Spec. i-f 1. Claims 1, 17,
and 21 are the independent claims on appeal. Claim 1 is illustrative of the
subject matter on appeal.
1. A system comprising:
an external telemetry module that transcutaneously
communicates with an implantable medical device; and
an external programming device that communicates with
the telemetry module and with the implantable medical device
through the telemetry module,
wherein, when the telemetry module and programming
device are coupled, the telemetry module provides a first
indication of coupling, to a user, and the programming device
provides a second indication of coupling, to the user, that is at
least substantially similar to the first indication,
wherein the telemetry module is configured to provide a
first plurality of different indications that include the first
indication and the programming device is configured to provide
a second plurality of different indications that include the second
indication, and
wherein at least some of the first plurality of indications
and the second plurality of indications are associated with
respective ones of a plurality of implantable medical devices that
includes the implantable medical device.
App. Br. 24, Claims Appendix.
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Application 12/127,404
ANALYSIS
Claims 1, 5-7, and 12-16
Appellants argue claims 1, 5-7, and 12-16 as a group. App. Br. 8.
We select claim 1 as being representative. Thus, claims 5-7 and 12-16
stand or fall with independent claim 1. See C.F.R. § 41.37(c)(l)(iv).
Appellants contend that the proposed combination of Nelson,
Thompson, and Zilberman, "even when combined as proposed by the
Examiner, fail[s] to disclose the features of claim[] 1." App. Br. 9. In
particular, Appellants argue that "[n]otably, in Zilberman, there is only one
display panel, on the RCU, which indicates the status of a single BTE
processor associated with that RCU." Id. at 11.
Id.
Accordingly, Zilberman contemplates a system in which
there is one corresponding RCU for each BTE processor and ICS
pair. Therefore, the RCU of Zilberman provides only one output
that indicates when the RCU is communicating with its
corresponding BTE processor and ICS pair. However, claim 1
requires that the programming device is configured to provide a
second plurality of different indications that include the second
indication, and that at least some of the second plurality of
indications are associated with respective ones of a plurality of
implantable medical devices that includes the implantable
medical device.
Appellants' argument against Zilberman' s single display panel is
unpersuasive because it is not commensurate with the language of the claim.
Claim 1 does not require a programming device with more than one display
panel, but rather a programming device configured to provide a second
plurality of different indications. The Specification discloses:
The different indications 19, 21 may comprise different
colors. In some examples, at least three different colors are
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Application 12/127,404
provided. The different colors may be provided by, for example,
a plurality of light emitting diodes (LEDs) or other lights, or as
colored elements of a display. In some examples, programmer
20 includes a display, while telemetry module 22 does not and
utilizes lights to provide the different colors. The disclosure is
not limited to such examples, however, and either device may
include a display or lights, and utilize one or both of a display or
lights to provide the different colors. In some examples,
indications 19, 21 may additionally or alternatively be audible or
tactile. Furthermore, in some examples, indications 19, 21 may
comprise different temporal or spatial patterns, and the patterns
may be one or more of sound, light, color, vibration, music, or
animation.
Spec. i-f 32 (emphasis added). Thus, a single display panel is consistent with
the language of the claim and the Specification.
Moreover, Appellants' arguments are not persuasive of
nonobviousness because Appellants are attacking Zilberman individually
when the rejection is predicated upon a combination of the teachings of
Nelson, Thompson, and Zilberman. Thompson "is directed to a programmer
for communication with different medical devices that utilize different
telemetry communication techniques." Thompson, Abstract. Thompson
teaches that programmer 5 may include user interface features, such as a
display screen, a speaker, or a light to provide feedback in the form of
sound, light flashes, images, or instructions that may be useful to a patient to
indicate that communication has been initiated or to indicate that the
programmer is positioned correctly for such communication. Ans. 3 (citing
Thompson i-f 51 ). Appellants' argument against Zilberman' s association
between the RCU, BTE processor and ICS is similarly unpersuasive. It is
certainly not necessary that the inventions of the references be physically
combinable to render obvious the invention claimed. And the test for
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Application 12/127,404
obviousness is not whether the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.
Appellants further argue that the two indications disclosed in
Zilberman are not on the same device. See App. Br. 12-13. In particular,
Appellants assert
The Examiner has provided no reason why one of ordinary skill
in the art would take a first indication of a connection between a
first and second device that is on a first device, such as LED 46
of Zilberman, and a second indication of the connection between
the two devices that is on the second device, such as the display
panel of the RCU of Zilberman, and place both of those
indication in the same device, let alone in the PDM 20' of
Nelson. Rather, a simple incorporation of the two indicators of
Zilberman would result in, at best, a single indicator on PDM
20'. Logically, one of ordinary skill in the art would place the
second indicator on programmer 20. Accordingly, the
modification of}Jelson in vie\'l/ of Thompson, and in further vie\'l/
of Zilberman would not result in a plurality of indications on
PDM 20'.
Id. at 13; see also Reply Br. 3--4.
The Examiner however does not propose that the features of the RCU
and the BTE of Zilberman be physically incorporated into the structure of
Nelson. Instead, the Examiner concludes that the combined teachings of the
references would have suggested to one of ordinary skill in the art the
Appellants' invention, and that the combination would have yielded nothing
more than a predictable result. See Ans. 4. Appellants' arguments overlook
the relevant combined teachings of the references and suggest that the
telemetry module and programming device require more than one indicator
on each device. See App. Br. 15 ("Any modification to Nelson that results
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Application 12/127,404
in a plurality of indicators on both the programmer 20 and PCM 20' would
not be predictable, as none of the references disclose a plurality of indicators
on each of two different devices."). The claim rather requires that the
telemetry module and the programming device be configured to provide a
plurality of different indications. As we discussed above, the Specification
discloses that those different indications may be in the form of different
color elements presented on a display panel or a plurality of light emitting
diodes (LEDs). See supra. As the Examiner finds, Zilberman discloses that
when a bidirectional telemetry link is employed, the RCU (programmer)
may display signals relating to the status of the BTE (telemetry module) and
ICS (implantable medical device). Ans. 4 (citing Zilberman 8:8-15).
Zilberman's RCU can communicate the status (indication) via a
multicolored LED or an LCD display panel, whereas Zilberman's BTE
signals coupling when its LED is activated or lights up. Zilberman 8:8-15.
Furthermore, Thompson teaches the use of various interface features such as
a display screen, a speaker, or a blinking light to communicate different
indications or feedback "in the form of sound or light flashes, images,
instructions, or the like" to the patient associated with the medical device.
Thompson i-f 51. Accordingly, Appellants have not persuasively rebutted the
Examiner's conclusion of obviousness by showing that the claimed
combination of familiar elements produces any new function.
In view of the foregoing, we sustain the Examiner's rejection of
independent claim 1. Dependent claims 5-7 and 12-16 therefore fall with
claim 1.
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Claims 2--4
Appellants argue that the Examiner "has provided no support" for the
additional feature of claim 2 "wherein the first and second indications
comprise colors that are at least substantially similar." App. Br. 16; Reply
Br. 5---6. The Examiner however finds that "[ e ]mployment of LEDs are well
known in the medical device art" as evidenced by the Thompson and
Zilberman references and determines that "it would have been obvious to
one having ordinary skill in the art at the time the invention was made to
modify the employment of one color LED lights or different color LED
lights since it would be a mere substitution of one LED for another since
they are equivalents." Final Act. 8. "Furthermore, [the Examiner reasons
that] color-coding or color association is [a] well known means of
monitoring a plurality of devices or components. Therefore, such a
modification would be an obvious modification to enhance the user's
monitoring and identification of associated devices." Id. We are not
persuaded of reversible error because Appellants have not rebutted the
Examiner's conclusion of obviousness.
As such, we sustain the rejection of claim 2, and claims 3 and 4,
which were argued based on their dependency on claim 2. See App. Br. 16.
Claims 8 and 9
We are not persuaded by Appellants' arguments that the Examiner
failed to present a prima facie case of obviousness with respect to claims 8
and 9. App. Br. 17-18; Reply Br. 6-7. As discussed above with respect to
claim 1, Zilberman teaches displaying signals relating to the status of the
bidirectional link between the RCU, BTE, and ICS via LED lights or a panel
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Application 12/127,404
display. The selection of the indication as suggested by Zilberman may be
activation of the LED light. Thompson also teaches using a variety of
different types of indications to convey that communication has been
initiated between the programmer and the medical device. Therefore, we
agree with the Examiner that the combination fairly teaches or suggests the
claimed subject matter of claims 8 and 9.
As such, we sustain the rejection of claims 8 and 9.
Claims 10 and 11
Appellants argue that "claim 10 does[] not simply require the delivery
of multiple therapies ... [but i]nstead, claim 10 requires an association
between indications and therapies and selection of the first and second
indications based on therapy delivered by the implantable medical device."
App. Br. 18-19; Reply Br. 7-9. The problem with Appellants' argument is
that it does not account for the combined teachings of the references.
Nelson teaches that telemetric interaction between the programmer, the
PDM and the IMDs enable monitoring and delivery of therapy in real time.
Nelson, Abstract. Thompson teaches a programmer for communication with
different medical devices that includes various interface features to provide
feedback in the form of sound, light, images, or instructions that are useful
to a patient in communication with a medical device. See supra. As
discussed above in detail, Zilberman teaches a programmer (RCU),
telemetry module (BTE), and IMD (ICS) in communication that can display
signals relating to the status of each via LED lights or a display panel. We
are of the view that such familiar elements would have been combinable by
an artisan possessing ordinary skill, creativity, and common sense using
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known methods in a manner that would have yielded predictable results.
Appellants rely on similar arguments against the rejection of claim 11. See
App. Br. 19.
As such, we sustain the rejection of claims 10 and 11.
Claims 17-20
With respect to the rejection of independent claim 17, in addition to
relying on arguments presented with respect to claim 1 (App. Br. 20),
Appellants further argue that
one of ordinary skill in the art would not understand an LED 46,
for example, to be equivalent to one of the LEDs within display
panel 68 of Zilberman. LED 46 is large enough to be a visible
indicator on its own, while a single LED within display 68 would
not be clearly visible.
Id. at 21. "Accordingly, the Examiner's assertions amount to mere
speculation and hindsight reconstruction of Appellant's claims." Id.
In essence, Appellants are arguing that one of ordinary skill in the art
would not have known based on the combined teachings of the references to
use an LED light on each of the devices to signal that the telemetry module
and programming device are coupled. We disagree. Indeed, Zilberman
discloses that activation of the LED indicator (i.e., lights up) on the BTE
processor provides a visual verification or indication of a working link
(coupling) between the RCU (programming device) and the BTE processor
(telemetry module). Zilberman also discloses that the RCU's "status display
panel may be as simple as a multicolored LED, or as sophisticated as an
LCD display panel of the type commonly used in pocket pagers or notebook
computers" to display signals relating to the operating status of the BTE
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processor. Zilberman 8:8-11. Moreover, Thompson discloses that a
programmer may include user interface features such as a light to provide
feedback (indications) in the form of light flashes or a blinking light.
Thompson i-f 51. Thus, the Examiner's reasons for combining the teachings
from Nelson with those of Thompson and Zilberman are based on the
explicit teachings of the references. The Examiner's conclusion of
obviousness takes into account knowledge that was within the level of
ordinary skill at the time the claimed invention was made, and does not
include knowledge gleaned only from Appellants' disclosure. We further
note that claim 1 7 does not provide the means for which each indication is
provided to the user, but only that the "the first and second indications are
substantially similar." Therefore, the activation or lighting up of the LED
light of each device as taught by Thompson and Zilberman meets the claim
limitation.
As such, we sustain the rejection of independent claim 17. We also
sustain the rejection of claim 18-20, which are argued based on their
dependency on claim 1 7.
Claims 21 and 22
Appellants rely on arguments presented with respect to claims 1
and 17 discussed above in contesting the rejection of independent claim 21.
See App. Br. 22-23.
As such, we sustain the rejection of claim 21 for the reasons
previously discussed with respect to claims 1 and 17. We also sustain the
rejection of claim 22, which is argued based on its dependency on claim 21.
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DECISION
The Examiner's decision to reject claims 1-22 is affirmed.
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).
AFFIRMED
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