Ex Parte Sullivan

Patent Trial and Appeal Board

Jun 20, 2016

12572691 (P.T.A.B. Jun. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/572,691 10/02/2009
96139 7590 06/22/2016
MARGER JOHNSON
-PHYSIO -CONTROL, INC.
888 SW 5th A venue, Suite 1050
PORTLAND, OR 97204
FIRST NAMED INVENTOR
Joseph L. Sullivan
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.
7257-0093 _p34686.00 4430
EXAMINER
MAHMOOD, NADIA AHMAD
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
06/22/2016 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):
docketing@techlaw.com
physio_control_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 L. SULLIV AN 1
Appeal2014-005800
Application 12/572,691
Technology Center 3700
Before MICHAEL C. ASTORINO, ROBERT L. KINDER, and
BRADLEY B. BAY AT, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's rejection of claims 1-19. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Appellant identifies "Physio-Control, Inc." as the real party in interest.
Br. 3.
Appeal2014-005800
Application 12/572,691
Appellant ;s Invention
Appellant's "invention generally relates to deciding on patient electric
shock therapy." Spec. i-f 1. The invention seeks to improve patient outcomes
by making better decisions of when to administer electric shock therapy. Id.
,-r 14.
Claimed Subject Matter
Claim 1 is the only independent claim on appeal and it is illustrative
of the claimed subject matter:
1. A defibrillator, comprising:
an energy storage module for storing electrical charge;
a defibrillation port for guiding via electrodes the stored
electrical charge to a person; and
a processor configured to:
receive latter data collected from a patient during a
session; and
decide from the latter data whether a latter electric shock
should be administered or not to the patient, the decision being
according to a first decision manner if no early electric shock has
been administered to the patient during the session prior to when
the latter data was collected, and according to a second decision
manner different from the first decision manner otherwise.
Br. 14, Claims App'x.
Examiner's Rejections
The following rejections are before us for review.
I. The Examiner rejected claims 1-19 under 35 U.S.C. § 112, second
paragraph, as indefinite. Final Act. 2 (mailed April 16, 2013).
II. The Examiner rejected claims 1-8 and 12-14 under 35 U.S.C.
§ 102(b) as anticipated by Snyder (US 2007/0213775 Al, pub. Sept. 13,
2007). Final Act. 3.
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Application 12/572,691
III. The Examiner rejected claims 9--11 and 15-19 under 35 U.S.C.
§ 103(a) as unpatentable over Snyder and Bardy (US 6,269,267 Bl,
iss. July 31, 2001 ). Final Act. 5.
ANALYSIS
Rejection I - Indefinite
Claim 1 requires, in pertinent part, "a defibrillation port for guiding
via electrodes the stored electrical charge to a person." Br. 14, Claims
App'x. The Examiner rejects claims 1-19 under 35 U.S.C. § 112, second
paragraph, determining the limitation "guiding via electrodes" renders claim
1 indefinite because the term "is inferentially included and it is unclear if the
applicant is positively reciting or functionally reciting the element." Ans. 2.
The Examiner also finds "[ t ]he claim has stated the function of the
defibrillation port, but has still not specifically stated the role of the
electrodes prior to relying on them for use with the defibrillation port and
delivery of electrical charge." Id. at 7-8.
In response to the Examiner's rejection, Appellant quotes from
paragraph 42 of the Specification, which states "defibrillation port 310 [of
FIG. 3] can be used for guiding via electrodes to person 82 an electrical
charge that has been stored in defibrillator 300." Br. 9 (emphasis omitted).
Appellant contends that the Examiner was attempting to improperly
establish a correlation between the electrodes and latter data. Id. (citing
Examiner remarks in Final Office Action). The Examiner, however, does
not repeat these remarks in the Answer. Appellant concludes "that the
claims both set forth the subject matter that applicant regards as his
invention and particularly point out and distinctly define the metes and
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Application 12/572,691
bounds of the subject matter to be protected by the patent grant." Id.
The Examiner bases the indefinite rejection in part on inferential
claiming, or introducing a new element in the middle of a recitation or
description of another element in a claim. Ans. 2. In this particular case, we
agree that introducing the electrodes in the middle of a functional recitation
detailing the purpose of another structural element (the defibrillation port)
renders the claim scope vague and amenable to disparate claim
constructions. We find no error in the Examiner's rejection seeking to
clarify whether the claimed "electrodes" positively recite a structure that is
part of the defibrillator or whether the electrodes are merely functionally
related to the defibrillation port. We agree with the Examiner that the claim
language "a defibrillation port for guiding via electrodes" is reasonably
construed as inferentially reciting a structural element, resulting in
uncertainty as to whether the claimed "electrodes" are part of the apparatus
as defined by the claim. See Halliburton Energy Servs., Inc. v. M-I LLC,
514 F.3d 1244, 1255 (Fed. Cir. 2008) ("the patent drafter is in the best
position to resolve the ambiguity in the patent claims"). Thus, we sustain
the rejection of independent claim 1 as indefinite, and claims 2-19
dependent thereon.
Rejection II - Anticipation
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims "their broadest
reasonable interpretation consistent with the specification" and "in light of
the specification as it would be interpreted by one of ordinary skill in the
art." In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). Also, we are careful not to read a particular embodiment appearing
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Application 12/572,691
in the written description into the claim if the claim language is broader than
the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993) ("[L ]imitations are not to be read into the claims from the
specification.").
Claim 1 requires, in pertinent part,
decide from the latter data whether a latter electric shock should
be administered or not to the patient, the decision being
according to a first decision manner if no early electric shock has
been administered to the patient during the session prior to when
the latter data was collected, and according to a second decision
manner different from the first decision manner otherwise.
Br. 14, Claims App'x. Appellant contends Snyder does not disclose a first
and second decision manner as required by claim 1. Br. 10.
The Examiner interprets a first and second decision manner as
encompassing a decision to deliver a shock or not to deliver a shock. Ans. 3,
8 ("Examiner would like to clarify that the 'decision manners' as claimed
are being interpreted as options to shock or not to shock since the claims as
is do not specifically limit the decision manners to anything further from the
applicant's specification."). Specifically, the determination to not deliver a
shock is the first decision manner and the determination to deliver a shock is
the second decision manner. Id. The Examiner determines the claim term
"decision manner" is not defined in the Appellant's Specification. The
Examiner cites to Figures 5 and 7 of the Specification and finds "[ t ]he basic
interpretation ... recurring throughout the application is [that] the two
decision manners are to either shock or not to shock." Id. at 8.
The Examiner finds Snyder discloses an external defibrillator with
CPR-ECG defibrillating shock capability. Id. at 3. According to the
Examiner, Snyder acquires ECG data representative of an ECG signal for a
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Application 12/572,691
patient, and this data is used to determine if a shock should be administered.
Id. (citing Snyder, i-f 11) (using ECG data to determine "if administration of
a defibrillating shock is determined to be appropriate"). The Examiner
reasons "[ t ]he two results of the first and second decision manner as claimed
are either to shock or not to shock based on if a previous shock has been
delivered." Id. at 8-9. The Examiner finds that Snyder's decision to apply
or not to apply shock is based on previous ECG data, and "[ t ]he ECG data as
disclosed by Snyder does not specifically use the term 'shock,' but is
however broad enough to encompass data resulting from a previous shock
being applied [see paragraph 0050 and figure 7]." Id. (second brackets in
original).
Appellant contends that Snyder's basic determination as to whether
administration of a defibrillating shock is appropriate is a single decision
manner and does not satisfy the claim requirement of having a first and
second decision manner. Br. 10-11. Appellant cites to specific examples of
decision manners from the Specification that involve more than a basic
decision to shock or not to shock. Id. at 10. According to Appellant, Snyder
does not "teach separate - and different - decision manners, let alone
decision manners that are based on whether an early electric shock has been
administered to the patient during the session prior to when the latter data
was collected." Id. at 11.
We disagree with Appellant's contentions. First, the Examiner's
interpretation of "decision manner" is broad but reasonable. We agree the
term may encompass the decision to administer a shock or not to administer
a shock. In Figure 5 of Appellant's Specification, the "THERAPY
DECISION" is described as "E.G. SHOCK I NO SHOCK" thus suggesting
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Application 12/572,691
that a decision manner may encompass the fundamental decision of whether
or not to administer a shock. We decline to impart limitations from the
Specification into the claims as advocated by Appellant. See Br. 10
(comparing embodiments from the Specification with Snyder). We agree
with the Examiner that Snyder's decision to apply or not to apply shock,
which is based on previous ECG data, would satisfy the first and second
decision manner limitations.
We also agree with the Examiner that Snyder's ECG data
encompasses data resulting from a previous shock being applied. For
example, Snyder discloses a second distinct decision manner after a first
decision manner is completed. Snyder states after "the defibrillation shock
is discharged to the patient, then the patient's heart is monitored to
determine whether a subsequent defibrillation shock is necessary." Snyder,
i-f 45. The determination of whether to administer a subsequent defibrillation
shock would take into account ECG data prior to that time, including the
first shock and disturbance data. See Snyder, i-f 50 ("the ECG data acquired
at 702 is analyzed by the processor 40 to determine if a shock is required"),
i-f 51 ("A determination is made at step 714 whether the analysis performed
by the processor 40 at the step 708 results in the administration of a
defibrillating shock. ... where a shock is determined to be appropriate ...
the processor 40 examines disturbance data to assure that detectable
handling of the patient has ceased.").
We find Appellant's remaining arguments unpersuasive. We sustain
the anticipation rejection of independent claim 1 based on Snyder.
Likewise, we sustain the rejection of claims 2-8 and 12-14, which are not
separately challenged by Appellant, for the same reasons set forth above.
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See Br. 12.
Rejection III- Obviousness
Claims 9-11 and 15-19 are rejected over Snyder and Bardy as
unpatentable. Appellant contends that Bardy fails to cure the deficiencies of
Snyder for the alleged shortcomings of the rejection of claim 1. Because
Appellant does not separately argue these claims, except for their
dependence from claim 1, we likewise sustain the obviousness rejection of
claims 9-11 and 15-19 for the reasons set forth above. See id.
CONCLUSION
The rejection of claims 1-19 under 35U.S.C.§112, second paragraph
as indefinite is affirmed.
The rejection of claims 1-8 and 12-14 under 35 U.S.C. § 102 based
on Snyder is affirmed.
The rejection of claims 9-11 and 15-19 under 35 U.S.C. § 103(a)
over Snyder and Bardy is affirmed.
DECISION
We AFFIRM the Examiner's decision to reject claims 1-19.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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