Rocco CRIVELLI et al.

Patent Trials and Appeals BoardJun 30, 2021

2020006458 (P.T.A.B. Jun. 30, 2021)

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. 12/509,834 07/27/2009 Rocco CRIVELLI 252464.000019 1825 6980 7590 06/30/2021 TROUTMAN PEPPER HAMILTON SANDERS LLP 600 PEACHTREE ST NE STE 3000 ATLANTA, GA 30308 EXAMINER WEARE, MEREDITH H ART UNIT PAPER NUMBER 3791 NOTIFICATION DATE DELIVERY MODE 06/30/2021 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): jim.schutz@troutman.com patents@troutman.com ryan.schneider@troutman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROCCO CRIVELLI, DANILLO ROTH, and ALEC GINGGEN Appeal 2020-006458 Application 12/509,834 Technology Center 3700 Before MICHAEL L. HOELTER, BRETT C. MARTIN, and CARL M. DEFRANCO, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 5–20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Lifesciences SARL Appeal Br. 3. Appeal 2020-006458 Application 12/509,834 2 CLAIMED SUBJECT MATTER The claims are directed to a method for the calibration of an implantable sensor. Claim 5, reproduced below, is illustrative of the claimed subject matter: 5. A method for calibrating a sensor of an implant before implantation into a body and using the sensor and the implant in the body, wherein said sensor is connected to control circuitry which includes a processor, a radio frequency (RF) communication circuitry, optical communication circuitry including a light-receiving device, a power source and memory, all of which being hermetically sealed within a housing, the sensor is disposed on a base plate, said method comprising the steps of: creating a bore through the base plate; placing the sensor over the bore so that the sensor is exposed to an external atmosphere while being hermetically sealed within the housing; placing said implant into a controlled environment outside of the body; creating an RF communication link between a remote controller and said RF communication circuitry of said control circuitry, whereby the control circuitry converts RF energy from the remote controller to help power at least the processor and RF communication circuitry; adjusting at least one aspect of said controlled environment to a first known value; allowing said sensor to measure said at least one aspect of said controlled environment and generate a first sensor reading; transmitting said first sensor reading from said implant to said remote controller using said RF communication link; comparing said received first sensor reading with said first known value of said at least one aspect of said controlled environment to create a first corrective coefficient; creating an optical communication link between said remote controller and said control circuitry of said implant before implantation into the body; Appeal 2020-006458 Application 12/509,834 3 transmitting said first corrective coefficient to said memory of said control circuitry using said optical communication link; allowing said control circuitry of said implant to use said first corrective coefficient to adjust said first sensor reading to align with said first known value for future readings; implanting said sensor and said implant within said body; and transmitting, after calibration and implantation, RF energy from said remote controller to said implant in said body for activating said sensor, powering at least said processor and said RF communication circuitry of said sensor to read output of said sensor and use the first corrective coefficient to calculate calibrated sensor data, and extracting calibrated sensor data in real time from said sensor implanted in said body. Appeal Br. 21 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Imran US 4,705,043 Nov. 10, 1987 Roberts US 6,292,697 B1 Sept. 18, 2001 Scheiner US 2002/0151812 A1 Oct. 17, 2002 Yang US 2005/0027175 A1 Feb. 3, 2005 Jain US 2008/0154101 A1 June 26, 2008 Ginggen EP 1 184 351 A1 June 3, 2002 REJECTIONS Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Roberts, Ginggen, Yang, and Scheiner. Final Act. 3. Claims 7–9, 14–17, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Roberts, Ginggen, Yang, Scheiner, and Jain. Final Act. 9. Appeal 2020-006458 Application 12/509,834 4 Claims 10–13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Roberts, Ginggen, Yang, Scheiner, and Jain. Final Act. 12. Claim 18 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Roberts, Ginggen, Yang, and Scheiner or alternatively, additionally over Imran. Final Act. 20. OPINION Subheading As Appellant states, the Examiner’s rejection combines the “discrete teachings . . . of five (5) separate references[] from different technologies that solve different technical problems.” Appeal Br. 9. We agree with Appellant that “the Examiner has failed to demonstrate any technically or legally acceptable motivation that would encourage one of skill in the art to combine any of these references with Roberts, other than the motivations taught only in Appellant’s own specification.” Id. Appellant is correct that the Examiner’s rejection is based “in impermissible hindsight using the roadmap created by Applicant’s claims.” Id. at 13. We first note that the claims at issue are method claims. The Examiner’s approach appears to have been to find various elements of the device disclosed by Appellant in disparate references, then to cobble together those device features into a similar device as Appellant’s, and then merely to state that having found the device obvious that the method would also be obvious. Although we do not agree that the Examiner has properly stated a motivation for the combination of the device aspects, in this particular case, the method is also not obvious simply because the Examiner can find all of Appeal 2020-006458 Application 12/509,834 5 the various elements of such a device in the prior art. Specifically, we agree with Appellant that “the Examiner has failed to show any technically supported need to modify Roberts from a nominal configuration to add the communications capabilities of Scheiner [that] Roberts already possessed.” Appeal Br. 13. Additionally, although Scheiner teaches both optical and RF communication, the Examiner provides no explanation as to why one of skill would have specifically chosen the claimed aspect of communicating the corrective coefficient via the optical link prior to implantation while using the RF link for other communication. As the Examiner admits, Roberts teaches all communication via RF links and Scheiner teaches the possibility of using optical links, but as Appellant notes, such communication is “between sensors already positioned on the heart.” Id. at 12 (citing Scheiner ¶¶ 21–22). The Examiner’s stated motivation is simply that this change would be an obvious modification for facilitating communication, but is silent as to why one of skill in the art would specifically choose optical communication as claimed. The mere fact that one of skill in the art would understand that RF and optical communications are known communication means does not explain why such a modification to Roberts would be made, especially given that Roberts’ device functions adequately while using only RF communication. As to Ginggen, again, the Examiner has found a device more similar to what is claimed than what is taught in Roberts, but the Examiner provides no explanation as to why one of skill in the art would calibrate such a device according to Roberts’ method with the proposed modifications made according to Scheiner. We do not disagree that Ginggen could be calibrated as taught in Roberts, but Ginggen provides no explanation why the more Appeal 2020-006458 Application 12/509,834 6 complicated method of Roberts would be necessary. Ginggen itself appears to work satisfactorily without such complicated calibration. Also, as noted above, Ginggen would still have to be modified according to Scheiner, which we have already found the Examiner has not properly substantiated. In general, the Examiner fails to take into account that merely finding device components does not necessarily obviate a method and in this particular case, the method includes aspects that are not necessarily obvious operations of calibrating the device. Here, it appears that the Examiner has used Appellant’s Specification as a roadmap and absent that roadmap would not have any basis for combining the various prior art references in the manner suggested. Accordingly, we do not sustain the Examiner’s rejections. CONCLUSION The Examiner’s rejections are reversed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 5, 6 103 Roberts, Ginggen, Yang, Scheiner 5, 6 7–9, 14–17, 19, 20 103 Roberts, Ginggen, Yang, Scheiner, Jain 7–9, 14–17, 19, 20 10–13 103 Roberts, Ginggen, Yang, Scheiner, Jain 10–13 18 103 Roberts, Ginggen, Yang, Scheiner, Imran 18 Appeal 2020-006458 Application 12/509,834 7 Overall Outcome 5–20 REVERSED