Walker, Robert G. et al.

Patent Trials and Appeals BoardFeb 21, 2020

13272960 - (D) (P.T.A.B. Feb. 21, 2020)

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. 13/272,960 10/13/2011 Robert G. Walker 101752.000042 6405 23377 7590 02/21/2020 BakerHostetler Cira Centre 12th Floor 2929 Arch Street Philadelphia, PA 19104-2891 EXAMINER PORTER, JR, GARY A ART UNIT PAPER NUMBER 3792 NOTIFICATION DATE DELIVERY MODE 02/21/2020 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): eofficemonitor@bakerlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBERT G. WALKER, DANIEL W. PIRAINO, and JAMES M. OWEN Appeal 2018-004426 Application 13/272,960 Technology Center 3700 ____________ Before NINA L. MEDLOCK, KENNETH G. SCHOPFER, and ROBERT J. SILVERMAN, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant0F1 appeals from the Examiner’s decision to reject claims 13–19. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Physio-Control Inc. Appeal Br. 1. Appeal 2018-004426 Application 13/272,960 2 BACKGROUND The Specification discloses that “[t]his invention relates generally to external defibrillators, and more specifically to [automated external defibrillators (“AEDs”)] and protocols which they carry out.” Spec. ¶ 1. ILLUSTRATIVE CLAIM Claim 13 is the only independent claim on appeal and recites: 13. A defibrillator for defibrillating a patient, comprising: a power source configured to store a charge; an energy storage device configured to receive at least a portion of the charge, in which at least a fraction of the charge portion can be delivered from the energy storage device via electrodes as a shock to defibrillate the patient; a user interface; and a controller configured to: obtain multiple successive data sets on at least one sensed physiological parameter of the patient, perform an analysis on each of the multiple data sets, if ventricular fibrillation is detected for a first analysis, communicate a duration for a first CPR interval wherein CPR is performed by a person, and for each analysis that is subsequent to the first analysis where ventricular fibrillation is detected, adjust the corresponding CPR interval for the person to perform CPR based at least in part on the at least one sensed physiological parameter, for each performed analysis, instruct delivery of at least one of the defibrillation shocks if the result of the analysis is ventricular fibrillation. Appeal Br. 18. Appeal 2018-004426 Application 13/272,960 3 REJECTIONS 1. The Examiner rejects claims 13–19 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 2. The Examiner rejects claims 13, 14, and 16–19 under 35 U.S.C. § 103(a) as unpatentable over Kroll1F2 in view of Callaway,2F3 Snyder,3F4 and Stickney.4F5 3. The Examiner rejects claim 15 under 35 U.S.C. § 103(a) as unpatentable over Kroll in view of Callaway, Snyder, Stickney, and Nova.5F6 DISCUSSION New Ground of Rejection With respect to independent claim 13, we determine that it is not reasonably possible to interpret the claim language “for each analysis that is subsequent to the first analysis where ventricular fibrillation is detected” with sufficient clarity to satisfy 35 U.S.C § 112, second paragraph. See In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) (per curiam). In particular, we agree with the Examiner that this claim language is amenable to at least two interpretations. See Ans. 12–15. Additionally, we find that the Specification may be read as consistent with either interpretation. First, one might consider that the clause “where ventricular fibrillation is detected” is intended to modify the clause “the first analysis.” Thus, the limitation “for each analysis that is subsequent . . .” would require adjustment of the CPR interval during each analysis that is after the first 2 Kroll et al., US 2006/0142809 A1, pub. June 29, 2006. 3 Callaway et al., US 6,438,419 B1, iss. Aug. 20, 2002. 4 Snyder et al., US 6,356,785 B1, iss. Mar. 12, 2002. 5 Stickney et al., US 2006/0173501 A1, pub. Aug. 3, 2006. 6 Nova et al., US 2004/0143298 A1, pub. July 22, 2004. Appeal 2018-004426 Application 13/272,960 4 analysis in which ventricular fibrillation is detected, regardless of whether ventricular fibrillation is detected during that subsequent analysis. Second, one might consider the clause “where ventricular fibrillation is detected” to modify “each analysis that is subsequent.” Thus, the limitation “for each analysis that is subsequent . . .” would require adjustment of the corresponding CPR interval only where ventricular fibrillation is detected in a subsequent analysis. We find that both of these interpretations are reasonable under a plain reading of the claim. Further, Appellant’s written disclosure does not provide further clarity regarding how the language would be interpreted by one of ordinary skill in the art. The written disclosure refers to an “initial rhythm” and the duration of CPR that is prompted based on whether ventricular fibrillation (“VF”) is detected with this initial rhythm. Spec. ¶ 48. However, the written disclosure does not provide a clear distinction between this initial analysis and subsequent analyses, as referred to in the claim. Rather, the written disclosure only discusses adaptive CPR intervals and how a CPR interval may be adjusted based on whether VF is present and how long VF has been detected, but without any clear reference to what occurs during subsequent analyses beyond determining VF in the first instance. See, e.g., Spec. ¶ 50– 52. Finally, Appellant argues that the Examiner erred to the extent the Examiner relies on the first interpretation discussed above. However, Appellant fails to explain adequately what the Examiner’s error is or why the second interpretation above is the only reasonable interpretation of the claim consistent with the Specification. See Reply Br. 3–4. Appeal 2018-004426 Application 13/272,960 5 Accordingly, we conclude that claim 13 is indefinite under 35 U.S.C. § 112, second paragraph. We also conclude that dependent claims 14–19 are indefinite for the same reasons. Finally, in view of our determination that claims 13–19 are indefinite, and because we find that an analysis of the Examiner’s rejections would necessarily be based on a speculative assumption as to the meaning of the claims, we do not sustain the rejections under 35 U.S.C. § 112, first paragraph and § 103(a). See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). However, it should be understood that our decision in this regard is pro forma and based solely on the indefiniteness of the claimed subject matter, and does not reflect in any way on the adequacy of the Examiner’s analysis in rejecting the claims. CONCLUSION We pro forma reverse the Examiner’s rejections of claims 13–19. In a new ground of rejection, we reject claims 13–19 under 35 U.S.C. § 112, second paragraph, as indefinite. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” Section 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground 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 prosecution will be remanded to the examiner. . . . Appeal 2018-004426 Application 13/272,960 6 (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. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv) (2017). In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed New Ground 13–19 112, first paragraph Written description 13, 14, 16– 19 103(a) Callaway, Snyder, Stickney 15 103(a) Callaway, Snyder, Stickney, Nova 13–19 112, second paragraph Indefiniteness 13–19 Overall Outcome 13–19 13–19 REVERSED 37 C.F.R. § 41.50(b)