Ex Parte Skelton

Patent Trial and Appeal Board

Jul 29, 2016

12771854 (P.T.A.B. Jul. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121771,854 04/30/2010
71996 7590 08/02/2016
SHUMAKER & SIEFFERT, P.A
1625 RADIO DRIVE, SUITE 100
WOODBURY, MN 55125
FIRST NAMED INVENTOR
Dennis M. Skelton
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.
1023-917US01/P0036418.00 2590
EXAMINER
MALAMUD, DEBORAH LESLIE
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
08/02/2016 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 DENNIS M. SKELTON
Appeal2014-001652
Application 12/771,854
Technology Center 3700
Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and
LEE L. STEPINA, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Dennis M. Skelton ("Appellant") has filed a Request for Rehearing
("Request") of the Decision on Appeal entered March 1, 2016 ("Decision")
in this application. The Request seeks reconsideration of the Board's
affirmance of the rejection of claims 1-8, 12-23, and 25-34 as anticipated
by Timmons, as well as designation of the affirmance as a new ground of
rejection in the Decision. Request 2.
We GRANT the request for reconsideration, and we now REVERSE
the rejection of claims 1-8, 12-23, and 25-34 as anticipated by Timmons.
We likewise REVERSE the rejection of claims 9 and 24 as unpatentable
over Timmons and Aminian.
Appeal2014-001652
Application 12/771,854
A. Designation as New Ground ofRejection
We first consider Appellant's contention that the Decision affirming
the Timmons anticipation rejection constituted an undesignated new ground
of rejection. Request 2---6. Appellant contends the Decision relied on
articulated reasoning and factual underpinnings that were different from the
Office Action on appeal. Id. at 3. According to Appellant, "the Examiner
cited a single paragraph of Timmons, i.e., paragraph [0028]," which "only
identifies one sensor, i.e., internal reference pressure sensor 34" in the
portion of paragraph 28 quoted in the Office Action (and in the Decision).
Id. at 3--4. Appellant contends the Decision additionally relied "on a
characterization of condition indicator 36" and additionally cited Timmons'
paragraphs 33, 53, and 57 in affirming the Examiner's rejection. Id. at 4---6.
Appellant asserts the Examiner's citation to paragraph 28, combined with
the statement in the final sentence of paragraph 28 referring to "[a]s
described in greater detail below ... ,"were insufficient to meet the notice
requirement of 35 U.S.C. § 132 as to the reasoning and factual
underpinnings set forth in the Decision. Id. at 6. In support, Appellant notes
Appellant characterized the Examiner's basis for rejection as relying on
internal reference sensor 34 as the claimed "posture sensor" on at least three
occasions, but on each occasion, the Examiner failed to state Appellant's
characterization was incorrect. Id. at 4.
We are persuaded that the rejection as set forth in the Final Action on
appeal, and as supplemented by the Answer, does not provide sufficient
notice to Appellant as to the basis for the rejection. See Final Act. 4--5, 7;
Ans. 3--4, 9-10. We have difficulty believing that the Examiner intended to
rely on Timmons' pressure sensor 34 as the claimed posture sensor, as
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Application 12/771,854
Appellant has repeatedly asserted. See Request 4. At the same time, the
Examiner's only response to such assertions was to quote Timmons'
paragraph 28, and state Appellant's "arguments do not comply with 37 CPR
1.111 ( c) because they do not clearly point out the patentable novelty which
he or she thinks the claims present in view of the state of the art disclosed by
the references cited." Final Act. 4--5, 7; Ans. 3--4, 9. While the Examiner's
various quotations of Timmons' paragraph 28 focus on how pressure
sensor 34 data is "offset" by an amount depending on the patient's posture
(Final Act. 5, 7; Ans. 9), the Examiner's continued lack of specific reference
to Timmons' posture sensor 36 is troubling.
Based on the foregoing, we agree with Appellant's argument that the
Decision's affirmance of the Timmons anticipation rejection constituted a
new ground of rejection. We therefore modify the Decision, to designate the
affirmance of the Timmons anticipation rejection as a new ground of
rejection. See 37 C.F.R. §§ 41.50(b) & 41.52(a)(4).
B. Reconsideration of the Merits
Concerning the merits of whether representative claim 1 is patentable
as anticipated by Timmons, if Timmons' posture sensor 3 6 is taken to be the
claimed posture sensor as set forth in the Decision, Appellant contends:
Nowhere does Timmons describe that the signal from the
condition indicator 36 in the form of a body posture sensor ...
may be subject to at least one of sensor signal drift or sensor
signal shift, much less describe ... detecting the presence of at
least one of sensor signal drift or sensor signal shift for the
condition indicator 36 ....
Request 7. Appellant's argument that Timmons fails to disclose detecting
the presence of sensor signal drift or shift for a posture sensor-whether
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Application 12/771,854
deemed to be pressure sensor 34 or posture sensor 36---is presented for the
first time in the Request, despite Appellant's recognition that "Timmons
describes determining posture of a patient using condition indicator 36 in the
form of a body posture sensor." See Appeal Br. 7-9. 1 Nonetheless, we will
consider this new argument now that we have designated the affirmance of
the Timmons anticipation rejection as a new ground of rejection set forth in
the Decision. See 37 C.F.R. § 41.52(a)(3).
We agree with Appellant's argument that the Examiner's rejection
fails to establish, by a preponderance of the evidence, that Timmons
discloses detecting the presence of sensor signal drift or shift for posture
sensor 36. As discussed above, the Examiner's rejection never specifically
refers to Timmons' posture sensor 3 6, much less discuss signal drift or shift
for posture sensor 36.
We further agree with Appellant's argument, in the Appeal Brief, that
Timmons' pressure sensor 34 is not a "posture sensor" for "determining a
posture state of a patient" as claimed. Appeal Br. 8-9. Sensor 34 "generates
a signal that corresponds to a pressure within the body cavity or pocket in
which it is located," which location "is preferably ... minimally influenced
by muscle movements," so the pressure signal "will tend to be correlated to
the local atmospheric pressure." Timmons i-f 28, Fig. 1. Such a pressure
measurement does not, as claimed, determine a posture state of a patient.
Appeal Br. 17 (Claims App.). Indeed, Timmons indicates the signal from
1 The Appeal Brief states "Timmons fails to disclose or suggest a method
comprising, inter alia," and then goes on to recite each and every action step
of the method of claim 1, including the "detecting" step. Appeal Br. 7. This
is not a cognizable argument that Timmons fails to disclose the "detecting"
step in particular.
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Application 12/771,854
pressure sensor 34 must be offset in order to account for the patient's
posture. Timmons i-f 28.
For the foregoing reasons, we conclude the Examiner errs in finding
Timmons discloses detecting the presence of sensor signal drift or shift for a
posture sensor-regardless of whether the claimed posture sensor is found to
correspond to pressure sensor 34 or posture sensor 36. Therefore, we
withdraw the affirmance of the Timmons anticipation rejection as to claim 1
and its dependent claims 2-8, 12-15, and 33. Independent claims 16, 31,
and 32 contain similar limitations directed to detecting sensor signal drift or
shift for a posture sensor. Appeal Br. 21, 25 (Claims App.). Therefore, we
likewise withdraw the affirmance of the Timmons anticipation rejection as
to claims 16, 31, and 32, and claims 17-23, 25-30, and 34 which depend
directly or indirectly from claim 16. For the reasons provided above, we
reverse the rejection of claims 1-8, 12-23, and 25-34 as anticipated by
Timmons.
Moreover, while not raised in the Request, the considerations above
apply to the Decision's affirmance of the rejection of dependent claims 9
and 24 under 35 U.S.C. § 103(a) as unpatentable over Timmons and
Aminian. The Examiner's reliance on Aminian does not cure the deficiency
of Timmons with respect to claim 1 (from which claim 9 depends) and
claim 16 (from which claim 24 depends). See Final Act. 11-12 (stating "it
would have been obvious ... to modify the sensor signal shift or drift of
Timmons with the patient alert of Aminian"). Thus, we withdraw the
affirmance of the rejection of claims 9 and 24 as unpatentable over Timmons
and Aminian, and instead reverse that rejection for the reasons provided
above.
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C. Decision
We grant the Request for reconsideration of the Board's affirmance of
the rejection of claims 1-8, 12-23, and 25-34 as anticipated by Timmons.
For the reasons provided above, we REVERSE that rejection, as well as the
rejection of claims 9 and 24 as unpatentable over Timmons and Aminian.
GRANTED
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