Ex Parte Poore et alDownload PDFPatent Trial and Appeal BoardNov 21, 201613413560 (P.T.A.B. Nov. 21, 2016) Copy Citation 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. 2 Appeal 2014-007945 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 3 Appeal 2014-007945 Application 13/413,560 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. 4 Appeal 2014-007945 Application 13/413,560 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 5 Appeal 2014-007945 Application 13/413,560 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 6 Appeal 2014-007945 Application 13/413,560 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 7 Appeal 2014-007945 Application 13/413,560 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 8 Appeal 2014-007945 Application 13/413,560 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. 9 Appeal 2014-007945 Application 13/413,560 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 10 Copy with citationCopy as parenthetical citation