Ex Parte Poore et al

Patent Trial and Appeal Board

Nov 21, 2016

13413560 (P.T.A.B. Nov. 21, 2016)

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.
13/413,560 03/06/2012 John W. Poore A12P1015 2212
36802 7590 11/23/2016
PACESETTER, INC.
15900 VALLEY VIEW COURT
SYLMAR, CA 91392-9221
EXAMINER
GETZOW, SCOTT M
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
11/23/2016 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):
Patent.CRMDSylmar@sjm.com
lcancino-zepeda@sjm.com
epineiro @ sj m. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN W. POORE and GENE A. BORNZIN
Appeal 2014-007945
Application 13/413,560
Technology Center 3700
Before LINDA E. HORNER, MICHELLE R. OSINSKI, and JILL D. HILL,
Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John W. Poore and Gene A. Bomzin (Appellants)1 seek our review
under 35 U.S.C. § 134 of the Examiner’s decision as set forth in the Final
Office Action, dated July 16, 2013 (“Final Act.”), rejecting claims 1-20.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Pacesetter, Inc. d/b/a St.
Jude Medical. Br. 3.
Appeal 2014-007945
Application 13/413,560
CLAIMED SUBJECT MATTER
Appellants’ claimed subject matter relates to “RF-powered
communication for implantable devices.” Spec., para. 1. Claims 1, 10, 19,
and 20 are independent. Claim 1 is reproduced below.
1. An implantable device, comprising:
a power source;
a radiofrequency communication circuit;
an antenna; and
a detection circuit coupled to the antenna, and configured
to detect radiofrequency signals received via the antenna,
wherein the detection circuit comprises a verification circuit that
processes the radiofrequency signals to detect a predefined
identifier within the radiofrequency signal, and wherein the
detection circuit is further configured to selectively couple power
from the power source to the radiofrequency communication
circuit as a result of the detection of the predefined identifier.
EVIDENCE
The Examiner relied upon the following evidence:
Hill
Denker
Donofrio
US 2008/0046038 A1 Feb. 21, 2008
US 2008/0077188 A1 Mar. 27, 2008
US 2010/0114241 A1 May 6, 2010
REJECTIONS
The Final Action included the following grounds of rejection:
1. Claims 1-8, 10-13, and 15-18 under 35 U.S.C. § 103(a) as
unpatentable over Hill, taken alone or in combination with
Donofrio.
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Application 13/413,560
2. Claims 9, 14, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable
over Hill, taken alone or in combination with Donofrio, and further
in view of Denker.
ANALYSIS
First Ground of Rejection
Appellants argue the claims subject to the first ground of rejection as a
group. Br. 6-8. We select claim 1 as representative of the group, and claims
2-8, 10-13, and 15-18 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
With regard to the rejection of claim 1 based on obviousness over Hill
alone, the Examiner found that Hill discloses all of the elements of claim 1
except for a verification circuit that detects an identifier. Final Act. 2
(incorporating findings from Non-Final Office Action, dated March 6, 2013,
in which the Examiner found that Hill discloses a ping signal). The
Examiner determined that the use of such a verification circuit would have
been obvious as it does not lead to unpredictable results and is one of only a
finite number of well-known ways for an external device to communicate
with an implantable device. Id.
Appellants argue that “Hill is completely silent on anything along the
lines of a verification circuit.” Br. 6 (arguing that Examiner misapplied the
law on obviousness by failing to “point to something in the prior art that
shows a verification circuit”). Appellants further contend that “Hill teaches
away from the inclusion of any such verification circuit.” Id. at 7. In
particular, Appellants argue that “because Hill is directed toward a device
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that can allow for a ‘rapid response to a changing physiological condition^] ’
. . . Hill teaches away from providing a verification circuit that will process
the received ping signal to detect a predefined identifier.” Id. (citing Hill,
para. 19).
In the Answer, in response to Appellants’ arguments, the Examiner
alternately found that Hill discloses a verification circuit. Ans. 3. In
particular, the Examiner found that Hill’s implanted devices can use radio
frequency identification (RFID) as the ping detector, and that Hill discloses
the ability to communicate separately with individual implanted devices, and
such disclosure implicitly requires an identification process takes place. Id.
at 2-3 (citing Hill, paras. 19, 23). The Examiner further explained that even
if Hill is not considered to have a verification circuit, Hill “teaches that
‘other mechanisms for wake up responses ... to a ping signal may be
implemented’” and that “[t]he skilled artisan is expected to be familiar with
multiple ways of individually addressing a[n] implanted device among
multiple implanted devices.” Ans. 3 (citing Hill, paras. 14, 19) (Examiner
finding that in paragraph 14, Hill incorporates by reference U.S. Patent
6,482,154 (hereinafter referred to as “the ’154 patent”), as disclosure of a
way to communicate with an implanted device). The Examiner noted that
“[t]he ’154 patent explicitly describes the well-known use of a unique
identifier which allows for a[n] external device to uniquely identify and
communicate with a particular implanted device.” Id. (citing ’154 patent,
col. 2,11. 1 et seq.). Appellants did not file a Reply Brief.
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Hill discloses “a local communication network implemented in an
implantable medical device system.” Hill, para. 13. In Hill, an implantable
medical device (IMD) 12, and a number of other devices 18, 20, 22, 24, and
26 are implanted in a patient 10. Hill, paras. 14-15, Fig. 1. Hill discloses
that IMD 12 can use an RF telemetry communication system such as
described in the ’154 patent. Id., para. 14 (incorporating the ’154 patent by
reference in its entirety). The ’154 patent describes an RF telemetry
communication system in which an external device issues an event signal
that may include an identifier unique to the implanted device. ‘154 patent,
col. 2,11. 2-14.
Hill further discloses that the system includes a local network pinging
device 16 that generates a wake-up signal. Hill, para. 16. Hill discloses that
“[djevice 18 and sensors 20 through 26 are normally in an ultra-low power
‘OFF,’ state and are responsive to an acoustic or RF ping signal generated
by pinging device 16.” Id., para. 18. Hill describes that “[t]he ping signal
causes a ping detector included in device 18 and sensors 20 through 26 to
wake-up power control circuitry which then wakes up the microprocessor
included in device 18 and sensors 20 through 26 thus transitioning device 18
and sensors 20 through 26 to a high power ‘ON’ state.” Id., para. 19. “The
microprocessor subsequently wakes up communications circuitry.” Id. Hill
discloses that “the ping detector includes an RF energy detector, e.g., a
resonant circuit in RFID or Tag systems).” Id. Hill further discloses:
Pinging device 16 can be implemented as a simple beacon
device for waking up all implanted devices 18 through 26.
Alternatively, pinging device 16 may be enabled to address
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individual devices or groups of devices through implementation
of an addressing scheme based on frequency, time or digital
code.
Id., para. 23.
Based on this disclosure in Hill, we agree with the Examiner’s finding
that paragraph 23 of Hill, in describing the ability of pinging device 16 to
address individual devices through an addressing scheme, implicitly
describes that the ping detector would engage in a verification process to
determine whether the pinging device 16 is addressing the particular device
associated with that ping detector. Further, we find that Hill’s disclosure in
paragraph 23 suggesting addressing individual devices would at least render
obvious to one of ordinary skill in the art the use of a verification circuit to
verily the ping signal, as the use of unique identifiers was a well-known
technique for communicating with an individual implanted device. See ’154
patent, col. 2,11. 1-14; Donofrio, para. 141 (discussed in further detail infra).
We disagree with Appellants’ contention that Hill teaches away from
inclusion of a verification circuit. “A reference may be said to teach away
when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). While we acknowledge that Hill
discloses that “[t]he response of an acoustic or RF ping detector is rapid
allowing minimal latency between generation of a ping signal and initiation
of a sensed physiological event” (Hill, para. 19), Hill does not discourage or
discredit the use of a verification circuit in the ping detector or suggest that
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use of a verification circuit would frustrate Hill’s benefit of achieving a
rapid response to a changing physiological condition (id.). On the contrary,
Hill suggests a system that would allow the pinging device to address
devices individually, which suggests the use of a verification process by the
ping detector. Id., para. 23. Further, the benefit of being able to address a
specific implanted device individually and to avoid having other implanted
devices respond to a ping signal that was not intended for them, while it may
come at the expense of a small increase in latency, does not obviate the
obviousness determination. See Winner Int 7 Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit
comes at the expense of another benefit, however, should not nullify its use
as a basis to modify the disclosure of one reference with the teachings of
another. Instead, the benefits, both lost and gained, should be weighed
against one another.”).
With regard to the rejection of claim 1 based on Hill in combination
with Donoffio, the Examiner found that “Donofrio teaches using a charging
signal with alphanumeric identifiers that the implanted device may decode;
the decoding is considered to incorporate a verification circuit.” Final
Act. 2-3 (citing e.g., Donofrio, para. 141). The Examiner determined that
“[t]o use such [an] identifier as taught by Donofrio in place of the ping
signal of Hill would have been obvious since such a substitution would yield
only predictable results.” Id. at 3.
Appellants argue that Donofrio does not teach “a predefined identifier
to be used by the implanted device to decide whether to couple the power
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source to the communication circuit, as the power source is already coupled
to the communication circuit because it is being charged by the signal.”
Br. 7. Appellants further contend that “there is no motivation to combine
Hill’s teaching with the encoding scheme used by Donofrio, as any such
processing of the encoded signal would only act to slow down[] Hill’s ‘rapid
response’ and therefore is contrary to the express teaching of Hill.” Id.
We disagree with Appellants’ characterization of Donofrio. Donofrio
relates to “mitigating interference between the operation of a charging
device that charges a first therapy module implanted in a patient and a
second therapy module implanted in the patient.” Donofrio, para. 5.
Donofrio teaches that “the processor of charging device 46 may be
configured to encode information in charging signals using well known
techniques in the art of communication.” Id., para. 141. In one
embodiment, the processor of charging device 46 encodes information in the
charging signal by associating particular charging signal waveform shapes or
patterns with an alphanumeric identifier and “arranging] the alphanumeric
identifiers to form words or other indicators that have a unique
predetermined meaning [implantable cardiac device] ICD 16 or [implantable
neurostimulator] INS 26.” Id. Donofrio teaches that the encoded
information allows charging device 46 to communicate with at least one of
ICD 16 and INS 26. Id., para. 134. “At least one of ICD 16 and INS 26
may be configured to receive and decode the information encoded in the
charging signal.” Id., para. 135. “For example, the processor of charging
device 46 may control the charging module to encode information in the
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charging signal, where the encoded information notifies ICD 16 that
charging device 46 is initiating charging of INS 26.” Id., para. 136; see also
id., para. 68 (charging device 46 communicates information that indicates it
is about to initiate generation and/or delivery of charging signals). Thus,
contrary to Appellants’ characterization that in Donofrio the power source is
already coupled to the communication circuit because it is being charged by
the signal, Donofrio discloses that charging device 46 can use encoded
information to notify ICD 16 that charging device 46 is about to initiate
charging signals. As such, Appellants have not demonstrated error in the
Examiner’s findings as to Donofrio.
Further, for the same reasons explained above with regard to the
teaching away argument, Appellants do not persuade us of error in the
Examiner’s proposed modification of Hill to use the encoding scheme of
Donofrio. In other words, even if the use of Donofrio’s encoding scheme
may increase latency, the benefits of being able to specifically address an
implanted device individually and to avoid having other implanted devices
respond to a signal that was not intended for them, provide adequate reason
to modify Hill in the manner claimed.
For these reasons, Appellants have not demonstrated error in the
Examiner’s rejection of claims 1-8, 10-13, and 15-18 under 35 U.S.C.
§ 103(a) as unpatentable over Hill, taken alone or in combination with
Donofrio.
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Second Ground of Rejection
Appellants rely on the arguments presented in support of patentability
of claim 1 over Hill alone, or in combination with Donoffio, as the basis for
patentability of the claims subject to the second ground of rejection. Appeal
Br. 8 (arguing that “Denker does not make up for the shortcomings in Hill or
Donoffio”). For the reasons provided above, we likewise sustain the
rejections of claims 9, 14, 19, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Hill, taken alone or in combination with Donoffio, and
further in view of Denker.
DECISION
The decision of the Examiner to reject claims 1-20 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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