Ex Parte SullivanDownload PDFPatent Trial and Appeal BoardJun 20, 201612572691 (P.T.A.B. Jun. 20, 2016) Copy Citation 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. 2 Appeal2014-005800 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 3 Appeal2014-005800 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 4 Appeal2014-005800 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 5 Appeal2014-005800 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 6 Appeal2014-005800 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. 7 Appeal2014-005800 Application 12/572,691 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 8 Copy with citationCopy as parenthetical citation