Ex Parte Schulhauser et al

Patent Trial and Appeal Board

Apr 26, 2016

12184020 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/184,020 07/3112008
27581 7590 04/28/2016
Medtronic, Inc. (CRDM)
710 MEDTRONIC PARKWAY NE
MS: LC340 Legal Patents
MINNEAPOLIS, MN 55432-9924
FIRST NAMED INVENTOR
Randal C. Schulhauser
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.
P0026078.00/LG 10126 6601
EXAMINER
LEVICKY, WILLIAM J
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
04/28/2016 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):
medtronic_crdm_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RANDAL C. SCHULHAUSER, JOHN K. DAY,
SCOTT WAYNE HASKIN, THO V. HUYNH, TODD A. KALLMYER,
BRIAN BRUCE LEE, JEFFREY 0. YORK, and WILLIAM COPE
Appeal2013-007847
Application 12/184,020
Technology Center 3700
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Randal C. Schulhauser et al. ("Appellants") seek our review under
35 U.S.C. § 134 of the Examiner's decision rejecting claims 1-11. Claims
12-19 have been withdrawn from consideration. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART and designate our affirmance as NEW
GROUNDS OF REJECTION pursuant to our authority under 37 C.F.R.
§ 41.50(b).
Appeal2013-007847
Application 12/184,020
CLAIMED SUBJECT MATTER
Appellants' claimed subject matter relates to "medical devices for
monitoring physiological conditions and, in some embodiments, to a
minimally invasive implantable device for monitoring a physiological
conditions [sic] and detecting the onset of a critical cardiac event such as a
myocardial infarction." Spec. para. 1. Of those claims before us on appeal,
claims 1 and 11 are independent. Claim 1, reproduced below, is illustrative
of the subject matter on appeal.
1. A method for monitoring of cardiac conditions
incorporating an implantable medical device in a subject, the
method comprising the steps of:
collecting physiological data associated with the subject
from the implantable device at preset time intervals, wherein the
collected data includes real-time electrocardiac signal data, heart
sound data, activity level data and tissue perfusion data;
comparing the electrocardiac signal data with a threshold
electrocardiac criteria for indicating a strong likelihood of a
cardiac event;
triggering an alarm state if the electro cardiac signal data is
not within the threshold electrocardiac criteria;
determining the current activity level of the subject from
the activity level data if the electrocardiac signal data is within
the threshold electrocardiac criteria;
determining whether the current activity level is below a
threshold activity level;
comparing the tissue perfusion data with a threshold tissue
perfusion criteria for indicating a strong likelihood of a cardiac
event if the current activity level is determined to be below a
threshold activity level;
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triggering an alarm state if the threshold tissue perfusion
data is not within the threshold tissue perfusion criteria; and
triggering an alarm state if the threshold tissue perfusion
data is within the threshold tissue perfusion criteria and the heart
sound data indicates that S3 and S4 heart sounds are detected,
wherein if an alarm state is not triggered, the physiological
data associated with the subject is collected at the expiration of
the preset time interval.
Appeal Brief, filed February 12, 2013, ("Appeal Br."), 20, Claims App.
Independent claim 11 is directed to a system for monitoring of cardiac
conditions incorporating an implantable medical device in a subject
comprising means for performing the steps of claim 1. Id. at 22-23.
EVIDENCE
The Examiner relied upon the following evidence:
Freeman
Sheldon
Benaron
Kramer
US 2005/0131465 Al
US 2006/0009811 Al
US 2007 /0027371 Al
US 2007/0150014 Al
REJECTIONS
June 16, 2005
Jan. 12, 2006
Feb. 1,2007
June 28, 2007
Appellants appeal from the Final Action, dated September 14, 2012,
("Final Act."), which includes the following rejections:
1. Claims 1-3, 5-9, and 11under35 U.S.C. § 103(a) as unpatentable
over Kramer, Benaron, and Sheldon.
2. Claims 4 and 10 under 35 U.S.C. § 103(a) as unpatentable over
Kramer, Benaron, Sheldon, and Freeman.
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ANALYSIS
First Ground of Rejection: Unpatentable over Kramer, Benaron, and
Sheldon
Appellants argue for patentability of claims 1-3 and 5-7 subject to the
first ground of rejection as a group. Appeal Br. 9-13. We select claim 1 as
representative of this group, and claims 2, 3, and 5-7 stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). AppeUants present additional
arguments for patentability of dependent claims 8, 9 ~ and 11. id. at 13---16.
\Ve address these arguments below under separate subheadings.
Claims 1-3 and 5-7
The Examiner found that Kramer discloses the method for monitoring
cardiac conditions of claim 1, except that "Kramer ... does not disclose
monitoring tissue perfusion, and does not explicitly state triggering an alarm
when signal data indicates a strong likelihood of [a] cardiac event." Final
Act. 4-5. The Examiner also found that Benaron discloses using an
implantable sensor for analyzing tissue perfusion, and that Sheldon discloses
comparing sensor data to thresholds for providing an alarm notifying a
patient of a cardiac event. Id. at 6. The Examiner determined that:
It would have been obvious to one having ordinary skill in the art
at the time the invention was made to modify the system/method
as taught by Kramer ... , with an implantable sensor for analysis
of tissue perfusion as taught by Benaron ... and with comparison
of sensor data to thresholds and based on the comparison
providing an alarm notifying the patient of a cardiac event as
taught by Sheldon ... , since such a modification would provide
the predictable results of more reliable and real-time sensing of
ischemia and reducing trauma on the patient's heart and body by
informing the patient of events so that they make [sic] take
corrective/therapeutic steps.
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Id.
Appellants argue that Kramer does not disclose the claimed step of
"collecting of physiological data associated with the subject from the
implantable device at preset time intervals." Appeal Br. 12; see also Reply
Brief, filed May 29, 2013 ("Reply Br."), 7-8. We agree with the Examiner's
finding that Kramer's implant controller inherently samples signals at preset
intervals and does not sample signals continuously. Examiner's Answer,
dated March 29, 2013 ("Ans."), 5. In particular, Kramer discloses that
hemodynamic signals are sensed, and cardiac performance parameter data is
produced, "according to a predetermined schedule, such as on a periodic
basis." Kramer, paras. 59, 60, 63.
Appellants further contend that the combined teachings of Kramer and
Benaron do not disclose "comparing the tissue perfusion data with a
threshold tissue perfusion criteria for indicating a strong likelihood of a
cardiac event if the current activity level is determined to be below a
threshold activity level," as recited in claim 1. Appeal Br. 10-12; see also
Reply Br. 5-7. Appellants also contend that the combination of references
fails to disclose "the particular order and conditions imposed on the various
comparing, determining and triggering steps by the limitations of
independent claim l ." Appeal Br. 12; see also Reply Br. 8-10. For the
reasons that follow, these arguments are not persuasive because they are not
commensurate with the broadest reasonable interpretation of claim 1.
During examination, claims are given their broadest reasonable
interpretation consistent with the specification. See In re Am. A cad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). "Construing claims
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broadly during prosecution is not unfair to the applicant ... because the
applicant has the opportunity to amend the claims to obtain more precise
claim coverage." Id.
Here, claim 1 is directed to a method for monitoring cardiac
conditions incorporating an implantable medical device in a subject, where
the method includes several steps that only need to be performed if certain
conditions precedent are met. See Appeal Br. 20, Claims App. For
example, claim 1 recites, in pertinent part:
comparing the electrocardiac signal data with a threshold
electrocardiac criteria for indicating a strong likelihood of a
cardiac event;
triggering an alarm state if the electrocardiac signal data
is not within the threshold electrocardiac criteria;
determining the current activity level of the subject from
the activity level data if the electrocardiac signal data is within
the threshold electrocardiac criteria.
Id. (emphasis added). Due to the language in the "triggering" and
"determining" steps, logically, the "triggering" and "determining" steps do
not need to be performed, after the "comparing" step if the condition
precedent recited in each step is not met. More specifically, the "triggering"
and "determining" steps of this claim are mutually exclusive. If the
electrocardiac signal data is not within the threshold electrocardiac criteria,
then an alarm is triggered and the remaining method steps need not be
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performed. See, e.g., Spec. para. 71 1; id. paras. 75-782; id., Fig. 43. If the
electrocardiac signal data is within the threshold electrocardiac criteria, then
the current activity level of the subject is determined. Given the language
recited in the remaining steps of claim 1, the remaining steps only need to be
reached if the determining step is reached. See id. Thus, in the event that
the electrocardiac signal data is not within the threshold electrocardiac
criteria and an alarm is triggered, the remaining steps of claim 1 need not be
performed in the method as recited.
In claim construction, "the name of the game is the claim." In re
Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (quoting Giles Sutherland
1 Paragraph 71 of the Specification describes:
In some embodiments, device processing system 28 is
configured to obtain ECG data from sensors 16, 18 and 20 to
determine whether the conditions for ST-Segment Elevation
Myocardial Infarction or STEMI exist. If the conditions do not
exist[,] accelerometer 29 may be used to ascertain the level of
activity of the subject before interpreting the remaining sensor
data and triggering an alarm, response or both.
2 Paragraph 75 describes that serious conditions are immediately identified
at the start of the method by determining whether collected data exceeds
threshold values, and if so, an appropriate response is triggered. Paragraph
78 describes that "[ s ]erious conditions may also be identified through
merging and evaluating all data obtained from sources 40, even if ST-
segment data ... do not immediately indicate cause for concern."
3 Figure 4 is a flow diagram of method 100, which shows that the method
follows at least two paths - a first path in which if STEMI is indicated from
ECG data (step 104), then an alarm is generated (step 106) and the method
ends, and a second path in which if S TEMI is not indicated from ECG data
(step 104), then the method proceeds with the remaining steps (108 110,
112) as appropriate.
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Rich, Extent of Protection and Interpretation of Claims -American
Perspectives, 21 Int'l Rev. Indus. Prop. & Copyright L. 497, 499 (1990)).
Based on the claim limitations as written, the broadest reasonable
interpretation of claim 1 encompasses an instance in which the method ends
when the alarm is triggered in response to the cardiac signal data not being
within the threshold electrocardiac criteria, such that the step of
"determining the current activity level of the subject" and the remaining
steps need not be reached. In other words, claim 1 as written covers at least
two methods, one in which the prerequisite condition for the triggering step
is met and one in which the prerequisite condition for the determining step is
met. Thus, the broadest reasonable interpretation encompasses a method
where only the steps of "collecting physiological data associated with the
subject from the implantable device at preset time intervals, wherein the
collected data includes real-time electrocardiac signal data, heart sound data,
activity level data and tissue perfusion data," "comparing the electrocardiac
signal data with a threshold electrocardiac criteria for indicating a strong
likelihood of a cardiac event," and "triggering an alarm state if the
electrocardiac signal data is not within the threshold electrocardiac criteria"
are performed. 4 The Examiner determined that the prior art would have
rendered obvious this method covered by claim 1, and for the reasons that
4 The Board previously has construed similar method steps in this same
manner. See, e.g., Ex Parte Fleming, Appeal 2014-002849, 2014 WL
7146104 (PTAB Dec. 12, 2014) (expanded panel decision on rehearing), Ex
parte Urbanet, Appeal 2011-002606, 2012 \VL 4460637 (PTAB Sept. 19,
2012), andExParteKatz, Appeal2010-006083, 2011\VL514314 (BPAI
Jan. 27, 2011).
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follow, we do not find persuasive Appellants' arguments contesting this
rejection.
The Examiner in this case was able to present a prima facie case of
obviousness as to claim 1 by providing evidence to show obviousness of the
"collecting," "comparing," and "triggering" steps. The Examiner did not
need to present evidence of the obviousness of the remaining method steps
of claim 1 that are not required to be performed under a broadest reasonable
interpretation of the claim (e.g., instances in which the electrocardiac signal
data is not within the threshold electrocardiac criteria such that the condition
precedent for the determining step and the remaining steps of claim 1 has not
been met). The Examiner determined that Kramer, as modified by Benaron
and Sheldon, renders obvious the method of claim 1, including the
"collecting," "comparing," and "triggering" steps. Final Act. 4-6.
Appellants' arguments that are directed to the failure of the Examiner to
demonstrate adequately that the "determining" step and the remaining steps
of claim 1 are rendered obvious are not commensurate with the broadest
reasonable interpretation of claim 1 and are, therefore, unpersuasive.
A proper interpretation of claim language, under the broadest
reasonable interpretation of a claim during prosecution, must construe the
claim language in a way that at least encompasses the broadest interpretation
of the claim language for purposes of infringement. "[I]t is axiomatic that
that which would literally infringe if later anticipates if earlier." Bristol-
Myers Squibb Co. v. Ben Venue Labs, Inc., 246 F.3d 1368, 1378 (Fed. Cir.
2001 ). Based on the manner in which claim 1 is written, the modified
method of Kramer would literally infringe claim 1 by virtue of its
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performance of only the "collecting," "comparing," and "triggering" steps.
See, e.g., Applera Corp. v. Illumina, Inc., 375 Fed. Appx. 12, 21 (Fed. Cir.
2010) (unpublished) (affirming a district court's interpretation of a method
claim as including a step that need not be practiced if the condition for
practicing the step is not met); Cybersettle, Inc. v. Nat 'l Arbitration Forum,
Inc., 243 Fed. Appx. 603, 607 (Fed. Cir. 2007) (unpublished) ("It is of
course true that method steps may be contingent. If the condition for
performing a contingent step is not satisfied, the performance recited by the
step need not be carried out in order for the claimed method to be
performed."). For the reasons provided supra, we agree with the Examiner's
determination that Kramer, as modified by Benaron and Sheldon, renders
obvious the "collecting," "comparing," and "triggering" steps of claim 1. As
such, we agree with the Examiner's determination that claim 1 is
unpatentable under 35 U.S.C. § 103(a).
For these reasons, we sustain the Examiner's rejection of claim 1 as
unpatentable over Kramer, Benaron, and Sheldon. Claims 2-3 and 5-7 fall
with claim 1.
Claim 8
Claim 8 depends from claim 1 and recites the steps of:
collecting respiration data relating to the subject's
respiration;
comparing the respiration data with a threshold respiration
criteria for indicating a strong likelihood of a cardiac event if the
current activity level is below a threshold activity level; and
triggering an alarm state if either the threshold tissue
perfusion data is not within the threshold tissue perfusion criteria
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or the respiration data is not within the threshold respiration
criteria.
Appeal Br. 22, Claims App. Appellants argue that Kramer does not disclose
the step of "comparing the respiration data with a threshold respiration
criteria for indicating a strong likelihood of a cardiac event if the current
activity level is below a threshold activity level." Appeal Br. 13-14; see
also Reply Br. 10-12.
At the outset, we note Appellants' concession that Kramer discloses
collecting respiration data. Appeal Br. 14 (stating that "Kramer discloses
that respiration data is collected"). Appellants argue only that Kramer does
not teach that the respiration data is "compared to a threshold criteria, or
used in a separate way, to indicate a strong likelihood of a cardiac event, as
required by claim 8." Id. We do not find this argument persuasive because
the claimed step of "comparing the respiration data with a threshold
respiration criteria for indicating a strong likelihood of a cardiac event" is a
limitation that only needs to occur "if the current activity level is below a
threshold activity level." As discussed supra, the broadest reasonable
interpretation of claim 1 includes an instance in which the step of
"determining the current activity level of the subject" and the remaining
steps based thereon do not take place. Thus, under the broadest reasonable
interpretation, the step of "comparing the respiration data with a threshold
respiration criteria for indicating a strong likelihood of a cardiac event if the
current activity level is below a threshold activity level" recited in claim 8 is
not necessarily performed. As such, Appellants' argument is not
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commensurate with the broadest reasonable interpretation of claim 8 and is,
therefore, unpersuasive.
For these reasons, we sustain the Examiner's rejection of claim 8 as
unpatentable over Kramer, Benaron, and Sheldon.
Claim 9
Claim 9 depends from claim 1 and recites the steps of:
collecting systolic pressure data; and
triggering an alarm state if the activity level is below a
threshold activity level, the threshold tissue perfusion data is
within the threshold tissue perfusion criteria, the heart sound data
does not indicate that S3 and S4 heart sounds are detected and
the systolic pressure data indicates a systolic pressure change
greater than a threshold criteria for systolic pressure.
Appeal Br. 22, Claims App. Appellants rely on the arguments presented for
patentability of claim 1 and additionally argue that the Examiner's rejection
of claim 9 is improper because Kramer does not disclose performing the
steps in the claimed order. Appeal Br. 14-15; see also Reply 12-13.
Appellants' arguments are not persuasive for the same reasons discussed
supra in regard to claim 1. Further, under the broadest reasonable
interpretation of claim 9, the step of "triggering an alarm state" is a
limitation that only needs to occur "if the activity level is below a threshold
activity level." As discussed supra, the broadest reasonable interpretation of
claim 1 includes an instance in which the step of "determining the current
activity level of the subject" and the remaining steps based thereon do not
take place. Appellants' arguments directed to the claimed order of these
steps are not commensurate with the broadest reasonable interpretation of
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claim 9 and are, therefore, unpersuasive. As such, we sustain the rejection
of claim 9 as unpatentable over Kramer, Benaron, and Sheldon.
Claim 11
Independent claim 11 is directed to a different statutory class of
invention than process claim 1. Claim 11 is directed to a system for
monitoring cardiac conditions and recites various "means for" limitations
involving functions substantially similar to those recited in claim 1. See
Appeal Br. 22-23, Claims App. Use of the term "means" raises a
presumption that Appellants used the term to invoke 35 U.S.C. § 112, sixth
paragraph. Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir.
2003). "This presumption can be rebutted when the claim, in addition to the
functional language, recites structure sufficient to perform the claimed
function in its entirety." Id. The "means for" limitations in claim 11 are
followed by functional language without reciting structure "sufficient to
perform the claimed function in its entirety." Thus, these limitations invoke
35 U.S.C. § 112, sixth paragraph.
Based on this understanding of the claim language, we look to the
Specification to determine the structure corresponding to each of the claimed
"means for" limitations. Appellants' Specification discloses "[p ]rocessor 28
executes instructions stored in digital memory 30 to provide functionality as
described herein." Spec. para. 53. Furthermore, an algorithm for carrying
out the claimed functions is depicted in Figure 4 and described in paragraphs
72 through 87 of the Specification. See WMS Gaming, Inc. v. Int 'l Game
Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999) ("In a means-plus-function
claim in which the disclosed structure is a computer, or microprocessor,
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programmed to carry out an algorithm, the disclosed structure is not the
general purpose computer, but rather the special purpose computer
programmed to perform the disclosed algorithm."). The Specification
describes that the various steps of process 100, shown in Figure 4, "may be
implemented with computer-executable instructions that are stored in a
digital memory 30 and that are appropriately executed by processor 28."
Spec. para. 72. The ensuing paragraphs describe, in sufficient detail, the
algorithm as carried out by processor 28. Id. paras. 73-87. As such, we
interpret the claimed "means for" collecting, comparing, triggering, and
determining to call for a processor programmed to perform the algorithm set
forth in Figure 4 and equivalents thereof.
Although claim 11 recites functions that are substantially similar to
the steps recited in the method of claim 1, as noted supra, claim 11 is
directed to a system. The broadest reasonable interpretation of a system
claim having structure that performs a function, which only needs to occur if
a condition precedent is met, still requires structure for performing the
function should the condition occur. This interpretation of the system claim
differs from the method claim because the structure (i.e., a processor
programmed to perform an algorithm for carrying out the recited function
should the recited condition be met) is present in the system regardless of
whether the condition is met and the function is actually performed. Unlike
claim 1, which is written in a manner that does not require all of the steps to
be performed should the condition precedent not be met, claim 11 is limited
to the structure capable of performing all the recited functions. In other
words, in this case, the system of claim 11 is narrower in scope than the
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method of claim 1. Thus, in order to show anticipation or obviousness of a
claim reciting structure that performs a function tied to a condition
precedent, the Examiner must cite prior art that discloses or renders obvious
such structure.
In contesting the rejection of claim 11, Appellants repeat the
arguments made for patentability of claim 1, including the contention that
the combination of Kramer, Benaron, and Sheldon fails to disclose the
particular order and conditions required by the claim. Appeal Br. 16-18; see
also Reply Br. 13. Specifically, Appellants argue that the Examiner erred in
determining that the order in which the functions are performed was "an
arbitrary design consideration which fails to patentably distinguish it over
the prior art." Appeal Br. 18 (quoting Final Act. 3 ). Appellants contend that
"the specific[] limitations on the means elements in claim 11 assist in
reducing false positives, gauging the severity of an incident of ischemia,
reducing the amount of power and memory needed by the system, and
allow[ing] for modification of the thresholds based on the current activity
level of the patient." Id.; see also id. at 13 (citing Spec. paras. 60, 63, 92).
Appellants also assert that the order is not arbitrary because "determining the
current activity level ... " and "comparing the tissue perfusion data ... "
occur only if certain conditions are met. Reply Br. 10.
The Examiner responds that Appellants' arguments do not refute the
Examiner's finding that the order is "an arbitrary design choice which fails
to patentably distinguish [the claim] over the prior art." Ans. 11-12. The
Examiner also asserts that because the prior art samples the same sensors,
there would have been only a finite number of configurations to assess
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cardiac function and rearranging the order of the prior art involves only
routine skill. Id. at 12-13 (citing In reJapikse, 181F.2d1019 (CCPA
1950)). The Examiner's determination of obviousness is lacking for two
reasons.
First, the Examiner has failed to define adequately the "finite number
of configurations to assess cardiac function." See Procter & Gamble Co. v.
Teva Pharm. USA, Inc., 566 F.3d 989, 996 (Fed. Cir. 2009) (affirming
district court determination that evidence failed to establish that structural
modification of prior art was "routine" and noting that patents are not barred
because it would have been obvious to explore or experiment where the
prior art gives only general guidance and no direction as to which
parameters are critical). Here, the number of different types of data and the
possible combinations of orders of assessing the data are wide ranging. In
this case, the number of possible configurations is more than a finite number
of identified, predictable solutions from among which a person of ordinary
skill would pursue as a matter of ordinary skill and common sense. See KSR
Int'!. Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Second, the Examiner's reliance on Japikse is misplaced. In Japikse,
the claim at issue related to a hydraulic power press. 181 F .2d at 1023.
There, the prior art disclosed all the structural limitations of the claimed
press except for the claimed position of a starting switch. Id. The court
affirmed the Board's determination that the claimed position of the starting
switch did not patentably distinguish over the prior art press because shifting
the starting switch disclosed by the prior art to a different position would not
modify the operation of the device. Id. In this case, the difference between
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the claimed system and the prior art systems is more than the mere
reordering of the functions performed by the system. The combined
teachings of the prior art do not provide adequate guidance as to a particular
order5 of performing the claimed comparisons and determinations as it
relates to the claimed data. As such, the cited prior art does not appreciate
that the order of the functions in the algorithm for assessing the claimed data
matters. Further, Appellants have pointed to critical differences between the
claimed system and the prior art system based on the order of the functions
performed by the claimed system. For these reasons, we do not sustain the
Examiner's rejection of claim 11 as unpatentable over Kramer, Benaron, and
Sheldon.
5 An order of certain functions performed by the structure (i.e., a processor
programmed to perform the algorithm) recited in claim 11 is logically
implied due to the language in the claim. For example, the function
performed by the "means for determining the current activity level" needs to
occur only if the preceding function of the "means for comparing
electrocardiac signal data with a threshold" occurs and shows that "the
electrocardiac signal data is within the threshold." See Appeal Br. 23,
Claims App. Thus, because performing the "determining" function is
conditioned upon the result of the "means for comparing," the function
performed by the "means for comparing" logically must precede the
"determining" function being performed. Similarly, the algorithm must be
programmed to invoke the "means for determining the current activity level"
prior to invoking the "means for comparing the tissue perfusion data with a
threshold" because this "comparing" function needs to occur only "if the
current activity level is determined to be below a threshold." See id.
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Second Ground of Rejection: Unpatentable over Kramer, Benaron,
Sheldon, and Freeman
To refute the rejection of dependent claims 4 and 10, Appellants rely
on the arguments presented for patentability of claim 1 and additionally
argue that Freeman does not cure the deficiencies of Kramer, Benaron, and
Sheldon. Appeal Br. 18-19. For the same reasons provided supra in our
analysis of the rejection of claim 1, we do not find these arguments
persuasive of error. Accordingly, we sustain the rejection of claims 4 and 10
as unpatentable over Kramer, Benaron, Sheldon, and Freeman.
DECISION
The decision of the Examiner to reject claims 1-3 and 5-9 under
35 U.S.C. § 103(a) as unpatentable over Kramer, Benaron, and Sheldon is
AFFIRMED.
The decision of the Examiner to reject claim 11 under 35 U.S.C.
§ 103(a) as unpatentable over Kramer, Benaron, and Sheldon is
REVERSED.
The decision of the Examiner to reject claims 4 and 10 under
35 U.S.C. § 103(a) as unpatentable over Kramer, Benaron, Sheldon, and
Freeman is AFFIRMED.
Because in some instances the claim interpretation relied on by the
Board to sustain the rejections of claims 1-10 differs from the interpretation
relied on by the Examiner, we designate our affirmance of the rejections of
these claims as NEW GROUNDS OF REJECTION so as to provide
Appellants with a full and fair opportunity to respond to the thrust of the
rejections. This decision should not be construed to imply that, in all
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instances in which the Board affirms a rejection based on a claim
interpretation that differs from the claim interpretation applied by the
examiner, the thrust of the rejection has changed so as to warrant designation
of the affirmance as a new ground of rejection. Rather, in this particular
case, in light of the scope of the arguments presented by Appellants, the
Board deemed it, in the interests of fairness to Appellants, appropriate to
designate the affirmance as a new ground of rejection.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to the
Examiner. ...
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
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Appeal2013-007847
Application 12/184,020
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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