Andrew G. KoschekDownload PDFPatent Trials and Appeals BoardOct 24, 201911719302 - (D) (P.T.A.B. Oct. 24, 2019) Copy Citation 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. 11/719,302 09/03/2010 Andrew G. Koschek 2004P02605WOUS 6564 24737 7590 10/24/2019 PHILIPS INTELLECTUAL PROPERTY & STANDARDS 465 Columbus Avenue Suite 340 Valhalla, NY 10595 EXAMINER ARCHER, MARIE ART UNIT PAPER NUMBER 1631 NOTIFICATION DATE DELIVERY MODE 10/24/2019 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): katelyn.mulroy@philips.com marianne.fox@philips.com patti.demichele@Philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte ANDREW G. KOSCHEK __________ Appeal 2018-005379 Application 11/719,302 Technology Center 1600 __________ Before ERIC B. GRIMES, FRANCISCO C. PRATS, and DAVID COTTA, Administrative Patent Judges. PRATS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–3, 6, 7, 10, 11, 13–17, 19, and 22– 29. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 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 “Koninklijke Philips N.V., by way of an Assignment recorded in the U.S. Patent and Trademark Office at Reel 019292, Frame 0706.” Appeal Br. 1 (entered October 11, 2017). Appeal 2018-005379 Application 11/719,302 2 STATEMENT OF THE CASE The following rejections are before us for review: (1) Claims 1–3, 6, 7, 10, 11, 13–17, 19, and 22–29, under 35 U.S.C. § 112, second paragraph, as being indefinite (Ans. 4–6)2; (2) Claims 1, 2, 6, 10–15, 19, and 23–25, under 35 U.S.C. § 103(a) as being unpatentable over Nova,3 Owen,4 and Cromer5 (Ans. 7–15); (3) Claims 3, 7, 16, 17, and 22, under 35 U.S.C. § 103(a) as being unpatentable over Nova, Owen, Cromer, and Weinberg6 (Ans. 15–17); (4) Claims 26–28, under 35 U.S.C. § 103(a) as being unpatentable over Nova, Owen, Cromer, and Laroia7 (Ans. 17–18); and (5) Claim 29, under 35 U.S.C. § 103(a) as being unpatentable over Nova, Owen, Mills,8 and Weinberg (Ans. 18–25). Claims 1, 14, and 29 are the independent claims on appeal. See Suppl. Appeal Br. 21–28.9 Claim 1 illustrates the subject matter on appeal and reads as follows: 1. An ambulatory medical telemetry device, comprising: at least one sensor configured for detecting at least one physiological parameter of a patient; a housing securable to the patient; 2 Examiner’s Answer entered March 5, 2018. 3 US 2003/0212311 A1 (published Nov. 13, 2003). 4 US 2003/0004547 A1 (published Jan. 2, 2003). 5 US 3,346,857 (issued Oct. 10, 1967). 6 US 4,237,448 (issued Dec. 2, 1980). 7 US 2005/0277429 A1 (published Dec. 15, 2005). 8 US 2006/0217775 A1 (published Sept. 28, 2006). 9 Response to Notification of Non-Compliant Appeal Brief, entered November 20, 2017. Appeal 2018-005379 Application 11/719,302 3 a circuit located in said housing and configured for receiving and processing a signal representative of the physiological parameter from the at least one sensor to generate recordable physiological data; at least one processor located in said housing and connected to the circuit, said at least one processor programmed to perform a self-test of an overall operation and each of a plurality of operational states of the ambulatory medical telemetry device, the plurality of operational states including at least three operational states; and an audible indicator located in said housing and operationally coupled to said circuit and said at least one processor to generate an audio signal indicating at least one operational state of the device including a successful completion of the self-test indicating the operational state is operating correctly for each of the plurality of operational states of the ambulatory medical telemetry device; wherein said audible indicator is configured to generate a plurality of different tones for indicating each of the overall operation and each operational state of the ambulatory medical telemetry device, each different tone corresponding to a different operational state of the device, the plurality of different tones further including a tone indicating the successful completion of the self-test for each of the plurality of operational states of the ambulatory medial [sic] telemetry device. Id. at 21–22 (emphasis added to show limitations at issue). Independent claim 14 recites a process in which, similar to claim 1, an ambulatory medical telemetry device generates an audio signal indicating a successful self-test, in which the self-test determines that an operational state of the device is performing correctly. See id. at 23–24. Independent claim 29, like claim 1, recites an ambulatory medical telemetry device that generates an audio signal indicating a successful self-test determining that, overall, the device is performing correctly. See id. at 27–28. Appeal 2018-005379 Application 11/719,302 4 INDEFINITENESS “a successful result of the self-test” As to claims 1 and 14, the Examiner concluded that the terms “a successful completion of the self-test” and “a successful result of the self- test” are indefinite because the terms “lack antecedent basis in the claim since a determination of such successful completion has not been made.” Ans. 5. In particular, the Examiner reasoned that claims 1 and 14 “only require a processor programed to perform a self-test (claim 1) and performing a self-test (claim 14). There is no determination in the claims that a successful completion or result of a self-test has been determined.” Id. The Examiner concluded, therefore, that it is “unclear what an audio signal indicating a successful completion of a self-test or result is or requires since a successful completion or result of the self-test has not been determined.” Id. We are not persuaded. The Supreme Court has stated that “a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Insts., Inc., 572 U.S. 898, 901 (2014) (internal quotations omitted); see also id. at 910 (“The definiteness requirement, so understood, mandates clarity, while recognizing that absolute precision is unattainable.”). In the present case, we conclude that the language in Appellant’s claims is clear enough to inform skilled artisans of the scope of the subject matter encompassed by the claims. Appeal 2018-005379 Application 11/719,302 5 Claim 1 recites an ambulatory medical telemetry device that has a “processor programmed to perform a self-test of an overall operation and each of a plurality of operational states of the ambulatory medical telemetry device.” Suppl. Appeal Br. 21. Claim 1 recites that the claimed device also has “an audible indicator.” Id. Claim 1 requires the audible indicator to “generate an audio signal indicating at least one operational state of the device.” Id. Claim 1 recites that one operational state of the device that must be indicated by a signal from the audible indicator is “a successful completion of the self-test indicating the operational state is operating correctly for each of the plurality of operational states of the ambulatory medical telemetry device.” Id. Thus, viewing claim 1 as a whole, and reading the recitations at issue in context, the Examiner does not persuade us that a skilled artisan would fail to understand the scope of the claim. Rather, a skilled artisan would understand that claim 1 requires the audible indicator to generate an audio signal upon successful completion of a self-test, in the situation in which the self-test determines that each of the tested operational states of the device is performing correctly. Accordingly, we reverse the Examiner’s rejection of claim 1, and its dependent claims, as indefinite based on claim 1’s recitation of successful completion of a self-test. Claim 14 recites a process for providing audible feedback from an ambulatory medical telemetry device. Id. at 23–24. Claim 14’s process includes the step of “performing a self-test for each of a plurality of operational states of the ambulatory medical telemetry device and an overall Appeal 2018-005379 Application 11/719,302 6 operation of the ambulatory medical telemetry device to monitor physiological data.” Id. at 24. Claim 14 then recites the step of “generating an audio signal indicating the overall operation and each of the plurality of operational states of the device which includes a successful result of the self-test indicating the operational state is operating correctly.” Id. Accordingly, viewing claim 14 as a whole, and reading the recitations at issue in context, the Examiner does not persuade us that a skilled artisan would fail to understand the scope of the claim. Rather, a skilled artisan would understand that claim 14 requires generating an audio signal upon successful completion of a self-test, in the situation in which (a) the self-test determines that each of the tested operational states of the device is performing correctly, and (b) in which the self-test determines that, overall, the device is operating correctly. We therefore reverse the Examiner’s rejection of claim 14, and its dependent claims, as being indefinite based on claim 14’s recitation of successful completion of a self-test. “an operational state . . . operating correctly” The Examiner concluded that claims 1, 14, and 29 are indefinite because the recitation in those claims of “an operational state” that is “operating correctly” is “ambiguous and unclear. The Appellant has not provided any special definition of the term ‘operational state.’” Ans. 5. The Examiner, again, does not persuade us that the claims are indefinite. As noted above, a claim is indefinite if, when read in light of the Specification, it “fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, 572 U.S. at 901. Appeal 2018-005379 Application 11/719,302 7 In the present case, rather than demonstrating that skilled artisans would fail to understand the scope of the language at issue, the Examiner concedes that the term “operational state” is amenable to a reasonable interpretation that “includ[es] any state, active or inactive of a device (power on, power off, warm up, start up, normal operation, emergency operation, standby, idle, etc.) and an ‘operational state’ is interpreted as a state of functioning or operation.” Ans. 5. Thus, rather than establishing that skilled artisans would not understand the scope of the language at issue, the Examiner has at best only shown that the disputed language is relatively broad. It is well settled, however, that “breadth is not to be equated with indefiniteness.” In re Miller, 441 F.2d 689, 693 (CCPA 1971). Accordingly, the fact that Appellant’s Specification does not define “operational state” does not persuade us that the term is indefinite. We therefore reverse the Examiner’s indefiniteness rejection of claims 1, 14, and 29, and their dependent claims, based on the claims’ recitation of an operational state that operates correctly. OBVIOUSNESS— CLAIMS 1, 14, AND THEIR DEPENDENT CLAIMS In rejecting claims 1, 2, 6, 10–15, 19, and 23–25 over Nova, Owen, and Cromer, the Examiner cited Nova as disclosing an ambulatory medical telemetry device (a defibrillator) having most of the features recited by the claims, including the capacity to perform a self-test, and to provide an audible signal regarding the device’s status. See Ans. 7–8. The Examiner conceded that Nova did not describe performing a self- test on a plurality of operational states of the device, as recited in claims 1 Appeal 2018-005379 Application 11/719,302 8 and 14. See id. at 8–9. The Examiner cited Owen as evidence that it would have been obvious to configure Nova’s device to perform diagnostics in relation to multiple different functions executed by the device, and to provide audible signals to alert the user/patient when the diagnostics determined that problems were present in different aspects of the device’s operation, such as a low/drained power supply, improperly attached sensing electrodes, or an inoperable defibrillator. See id. at 9–12. The Examiner conceded that Nova and Owen did not teach or suggest using different tones for successful completion of the self-test of each of the operational states, as recited in claims 1 and 14, and cited Cromer as evidence that it was known in the art to provide distinct audible tone signals indicative of different states of a tested instrument. See id. at 12–13. Appellant contends, among other things, that the Examiner erred in determining that the cited references teach or suggest configuring Nova’s device to generate audible signals upon completion of a successful self-test determining that each of the tested operational states of the device is working correctly, as recited in claim 1. See Appeal Br. 11–12.10 Rather, Appellant contends, Nova and Owen only teach generating an audible signal when a self-test detects an error condition, as opposed to correct operation of the device. See id. Appellant makes a similar argument as to claim 14. See id. at 14–15. The Examiner responds: If an error condition is identified for an operational state, then the self-test (diagnostics routine) for that operational state was successfully completed. If such error condition would not have 10 Appeal Brief entered October 11, 2017. Appeal 2018-005379 Application 11/719,302 9 been identified, then the diagnostics tests in Owen’s device would not have been successful. Thus it is not agreed that Owen fails to teach the claimed limitation. Ans. 29. We find that Appellant has the better position. As noted above, Appellant’s claim 1 recites that one operational state of the device that must be indicated by a signal from the audible indicator is “a successful completion of the self-test indicating the operational state is operating correctly for each of the plurality of operational states of the ambulatory medical telemetry device.” Suppl. Appeal Br. 21 (emphasis added). Claim 14 similarly recites the step of “generating an audio signal indicating the overall operation and each of the plurality of operational states of the device which includes a successful result of the self-test indicating the operational state is operating correctly.” Id. at 24 (emphasis added). Thus, both claim 1 and claim 14 require an audible signal to be generated upon completion of a self-test that determines correct operation of the device and its operational states. We are not persuaded, therefore, that the Examiner is reasonable in interpreting claims 1 and 14 as encompassing a situation in which a device generates an audible signal only upon detecting an error condition in the device. To the contrary, as noted above, a skilled artisan would reasonably interpret claims 1 and 14 as requiring the audible indicator to generate an audio signal upon successful completion of a self-test, where the self-test determines that each of the tested operational states of the device, and the device itself, is performing correctly. That is, claims 1 and 14 require an audio signal to be generated upon completion of a self-test that yields a positive result, as opposed to a negative result. Appeal 2018-005379 Application 11/719,302 10 The Examiner does not identify any teachings in any of the references cited in this rejection that suggest generating an audio signal upon completion of a self-test that yields a positive result. To the contrary, the references cited in this rejection describe using auditory signals to inform the device’s users of a patient emergency, an error condition, or a problem with the device. Specifically, Nova describes a portable defibrillator that conducts self-tests, for example when “the device requires routine maintenance; the medical device or a component thereof is malfunctioning or requires maintenance as determined by a periodically conducted self-test (e.g., the voltage level of a power source is too low).” Nova ¶ 24. The portion of Nova cited by the Examiner as teaching generation of an audible signal, however, only describes doing so in an emergency situation. See id. ¶ 26 (“In an emergency context, the alarm system 100 may be independently notified of a trigger event, e.g., via a 911 call, and may instruct the portable medical device to activate and perhaps issue an audible and/or visual tone to indicate its location.”). Similarly, Owen discloses a wearable defibrillator that can perform diagnostics, i.e., self-tests, when the device is cold-started or warm-started. See Owen ¶ 188 (“Cold start diagnostics include . . . safety tests so as to verify that safety controls are operational . . . . Warm start diagnostics include operational state data tests (protected RAM validation) and patient parameters validation.”). Again, however, when discussing the audio signals generated by the device, the portion of Owen cited by the Examiner only teaches signaling error conditions, or problems with the device: Appeal 2018-005379 Application 11/719,302 11 Auditory indicator 44 comprises a speaker (in preferred embodiments, an MG Electronics MCS298 speaker) or the like, which provides verbal messages corresponding to information displayed on visual indicator 42. . . . In preferred embodiments of the invention, auditory indicator 41 echos visual display 42, [which provides the patient with user-related information regarding the operation of the device.] . . . Auditory indicator 44 may also be configured to provide additional sounds, such as tones, buzzing, beeping, etc. to indicate error conditions within defibrillator 10. Examples of such error conditions include, but are not limited to, a low or drained power supply, improper attachment of sensing electrodes 31 to the patient, detachment of sensing electrodes 31 from the patient, and inoperability of defibrillator 10. In addition, another auditory indicator, such as annunciator 46, may also be included on defibrillator 10. Annunciator 46 is preferably separate from auditory indicator 42, and produces a buzzing or other unique sound to indicate error conditions within defibrillator 10, particularly a low or drained power supply. Id. ¶ 119. Cromer, the other reference cited by the Examiner, describes a device for use in conjunction with a telephone, the device generating different tones depending on the status of a monitoring apparatus attached to the tone- generating device. See Cromer 1:39–44 (“It is one of the objects of the present invention to provide audible indicating apparatus which operates in conjunction with a ‘data-phone’ instrument or similar instrument to provide an audible indication of the status or condition at the location of the instrument through telephone apparatus.”); see also id. at 1:45–49 (“Another object is to provide audible indicating apparatus in which audible signals indicative of different statuses or values of a condition are produced by changes in audible tone signals which are readily distinguishable and easily understandable by normal hearing.”). Appeal 2018-005379 Application 11/719,302 12 Thus, Cromer, like Nova and Owen, does not teach or suggest generating an audible signal upon completion of a self-test that yields a positive result, as claims 1 and 14 require. Nor does the Examiner, in rejecting claims 1 and 14, provide any rationale that explains why a skilled artisan would have configured the devices of Nova and/or Owen to generate an audible signal upon completion of a self-test that yields a positive result. To the contrary, as discussed above, the Examiner unreasonably interprets claims 1 and 14 as encompassing devices, like those of Nova and Owen, which only generate audible signals when error conditions are diagnosed. In sum, we are not persuaded that the Examiner reasonably interpreted claims 1 and 14 as encompassing devices, like those of Nova and Owen, which only generate audible signals when error conditions are diagnosed. Moreover, having reviewed the relevant teachings in each of the references cited in rejecting claims 1 and 14, we are not persuaded that the references teach or suggest generating an audible signal upon completion of a self-test that yields a positive result. Accordingly, because we are not persuaded that the Examiner has explained sufficiently why Nova, Owen, and Cromer render claims 1 and 14 obvious, we reverse the Examiner’s rejection of claims 1 and 14, as well their dependent claims 2, 6, 10–13, 15, 19, and 23–25, over those references. In rejecting claims 3, 7, 16, 17, and 22, the Examiner relied on Nova, Owen, and Cromer for the teachings discussed above as to claims 1 and 14, and cited Weinberg as evidence that features in dependent claims 3, 7, 16, 17, and 22 would have been obvious variations of the device described in Nova and/or Owen. See Ans. 15–17. Appeal 2018-005379 Application 11/719,302 13 Similarly, in rejecting claims 26–28, the Examiner relied on Nova, Owen, and Cromer for the teachings discussed above as to claim 14, and cited Laroia as evidence that features in dependent claims 26–28 would have been obvious variations of the device described in Nova and/or Owen. See id. at 17–18. Because the Examiner did not identify, nor do we discern, any teachings in Weinberg or Laroia that remedy the deficiencies discussed above of Nova, Owen, and Cromer as to claims 1 and 14, we also reverse the Examiner’s rejections that combine Nova, Owen, and Cromer with Weinberg or Laroia. OBVIOUSNESS—CLAIM 29 In rejecting claim 29, the Examiner again cited Nova as disclosing an ambulatory medical telemetry device (a defibrillator) having most of the features recited by the claims, including the capacity to perform a self-test, the capacity to provide an audible signal regarding the device’s status, and the capacity to receive a wireless paging signal from a remote station. See Ans. 18–20. The Examiner conceded that Nova did not disclose that its device was configured to receive a wireless paging signal that requested the patient to return to a predetermined area, as recited in claim 29. See id. at 20. The Examiner noted, however, that Nova taught that the patient using the device could “trigger an event, for example to request assistance for which the central monitoring station can summon an ambulance (call to 911) (¶23) and that the medical device is configured to provide an audible tone, for example to indicate its location (¶26).” Id. Appeal 2018-005379 Application 11/719,302 14 Based on those teachings in Nova, the Examiner reasoned that it would have been obvious to modify Nova’s device so that the paging signal received by the device requested the patient to return to a predetermined area. See id. In particular, the Examiner reasoned that a skilled artisan would have had motivation and a reasonable expectation of success in configuring Nova’s device to receive a paging signal summoning the patient to a predetermined area “because Nova teaches . . . summoning assistance to the patient in response to an event (Nova at ¶23) and the paging signal would alert the patient to ensure that the patient is at the location where the assistance will arrive.” Id. The Examiner also conceded that Nova did not describe performing a self-test on the overall operation of the device, or generating a plurality of different audible tones, as recited in claim 29. See id. The Examiner cited Owen as evidence that it would have been obvious to configure Nova’s device to perform diagnostics in relation to multiple different functions executed by the device, as well as the device’s overall operation, and to provide audible signals to alert the user/patient when the diagnostics determined that problems were present in the device’s operation. See id. at 21–23. The Examiner also conceded that Nova and Owen did not teach or suggest providing an audible indication of a successful completion of a self- test of the overall operation of the device. Id. at 23. To address that deficiency, the Examiner cited Mills as teaching a medical device self-test system in which the test results “are given in the form of pulses to give a signal at a particular level (¶12).” Id. In particular, the Examiner noted that the pulses “are used to indicate a positive condition for a component, they Appeal 2018-005379 Application 11/719,302 15 may also be used to indicate failure of components or the self-test system itself (¶ 15). Thus, Mills teaches providing an indication of a successful completion of a self-test (positive condition of a component).” Id. Based on these teachings, the Examiner reasoned that it would have been obvious to combine “the teachings of Owen with Mills. One would recognize that providing the patient with an indication on whether the diagnostics (self-test) has been successfully completed is advantageous to ensure the patient that the system has been checked and is operating properly.” Id. The Examiner additionally reasoned that it would have been obvious to combine “teaching[s] of Nova and Owen as modified by Mills” because “this modification would provide the advantage of enabling the defibrillator in Nova with an audible indication of the successful completion of the diagnostics thereby informing the patient about the status of the system and ensuring the patient that the system has been checked.” Id. Lastly, the Examiner cited Weinberg as evidence that it would have been obvious to use a plurality of audible tones to convey different types of information to the user/patient, including a message requesting the user/patient to go to a particular location, as well as an indication that the device is functioning properly overall. Id. at 24–25. In this instance, having carefully considered the arguments and evidence advanced by Appellant and the Examiner, Appellant does not persuade us that the Examiner erred in determining that the device recited in claim 29 would have been obvious in view of Nova, Owen, Mills, and Weinberg. Appeal 2018-005379 Application 11/719,302 16 Appellant contends that the Examiner erred in determining that claim 29 would have been obvious in view of the cited references because “Nova discloses using a paging network to communicate with an alarm system. Nova does not disclose receiving paging signals, much less a signal requesting a patient to return to a predetermined location.” Appeal Br. 18; see also Reply Br. 9 (“Appellants assert that Nova discloses using a paging network to communicate with an alarm system. This is different from receiving paging signals, much less a signal requesting a patient to return to a predetermined location.”). We are not persuaded. The Supreme Court has explained that, when determining whether the prior art supplies a reason for practicing the claimed subject matter, the analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also id. at 421 (“A person of ordinary skill is . . . a person of ordinary creativity, not an automaton.”). In the present case, as noted above, the Examiner conceded that the cited references did not expressly teach a device that received a paging signal requesting the patient to go to a predetermined location. See Ans. 20. The Examiner reasoned, however, that “because Nova teaches . . . summoning assistance to the patient in response to an event (Nova at ¶23)” a skilled artisan would have recognized that receiving a paging signal requesting the patient to go to a predetermined location “would alert the patient to ensure that the patient is at the location where the assistance will arrive.” Id. Appeal 2018-005379 Application 11/719,302 17 Appellant’s arguments about the alleged deficiencies in the express teachings of the references do not address the Examiner’s stated rationale. Nor does Appellant explain why the Examiner erred in finding that it would be reasonable to infer that, when summoning assistance for the patient as taught in Nova, it would be desirable to summon the patient to a predetermined location, to ensure the patient’s presence at that location, to receive the required assistance. Because Appellant does not identify, nor do we discern, specific error in the Examiner’s rationale for configuring Nova’s device to receive the paging signal recited in claim 29, we do not find Appellant’s arguments persuasive in that regard. Appellant also does not persuade us that the Examiner erred in finding that the combined teachings of the references would have suggested configuring the defibrillator of Nova and/or Owen to perform a self-test indicating that, overall, the device is operating correctly, and to generate a distinct audible tone when correct overall operation is determined. As the Examiner found, Owen discloses generating an audible signal “to indicate error conditions within [the] defibrillator.” Owen ¶ 119 (emphasis added). Because Owen generates an audible signal upon successful completion of a self-test indicating a negative result as to the overall operation of the defibrillator, Appellant does not persuade us that “none of the references disclose a successful completion of a self-test.” Appeal Br. 19. While Owen does not describe audibly signaling overall correct operation of the device as recited in Appellant’s claim 29, Mills discloses that, in the art of self-testing medical devices, it was useful to inform the users of positive results of self-tests. See Mills ¶ 15 (“Although the [self- Appeal 2018-005379 Application 11/719,302 18 diagnostic] pulses may be used to indicate a positive condition for a component, they may also be used to indicate failure of components or the self test system itself.”). As noted above, moreover, in addition to identifying Mill’s teaching regarding the usefulness of informing medical device users of positive self- test results, the Examiner provided a specific rationale, based on the combined teachings of the references, explaining why a skilled artisan would configure a defibrillator to provide an audible signal indicating overall correct operation of the device. See Ans. 23 (an audible signal indicating overall correct operation would “[alert the patient] to ensure the patient that the system has been checked and is operating properly” and “inform[] the patient about the status of the system and ensur[e] the patient that the system has been checked”). Appellant does not identify, nor do we discern, error in the Examiner’s reasoning that a skilled artisan had a good reason for, and a reasonable expectation of success in, configuring a defibrillator to provide an audible signal indicating overall correct operation of the device, as recited in Appellant’s claim 29. Rather than addressing the Examiner’s reasoning based on the combined teachings of the cited references, Appellant merely points out the differences between the references and claim 29, when viewing the references in isolation: Owen does not disclose a successful result of a self-test indicating the operational state is operating correctly. Mills discloses that a self-test on a device produces pulses converted into a signal displayed on an indicator display, but does not disclose that an audio signal is generated from the signal. Moreover, while Mills discloses visually indicating successful testing of individual components, Mills does not Appeal 2018-005379 Application 11/719,302 19 contemplate providing an affirmative signal indicating that (as per claim 29) a successful completion of a self-test of the overall operation of the device. Appeal Br. 18–19; see also Reply Br. 10 (“As noted, Owen does not disclose a successful completion of a self- test. Mills does not provide a tone indicative of a successful completion of the self-test.”). In failing to address the rationale advanced by the Examiner, Appellant at best has shown that the cited references do not have all of the features recited in Appellant’s claim 29. As the Supreme Court has explained, however, “the mere existence of differences between the prior art and an invention does not establish the invention’s nonobviousness.” Dann v. Johnston, 425 U.S. 219, 230 (1976). It is well settled, moreover, that because Appellant’s arguments are directed to the alleged deficiencies in the cited references when viewed in isolation, rather than in the combination advanced by the Examiner, Appellant’s arguments are insufficient to demonstrate nonobviousness. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non- obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. . . . [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole”). Appellant also does not persuade us that the cited references fail to teach or suggest generating a plurality of different audible tones, as recited in claim 29. See Appeal Br. 19; Reply Br. 10. As discussed above, we agree with the Examiner that a skilled artisan would have considered it obvious to generate an audible tone summoning the device’s user/patient to a predetermined location, and an audible tone Appeal 2018-005379 Application 11/719,302 20 indicating a positive result of a self-test of the overall operation of the device, as recited in claim 29. As also noted above, Nova teaches that its defibrillator may “issue an audible . . . tone to indicate its location.” Nova ¶ 26. We are not persuaded, therefore, that the cited references fail to suggest generating an audible tone as to the location of the device, as recited in claim 29. As also noted above, Owen discloses generating audible tones upon detecting a variety of error conditions. See Owen ¶ 119. Appellant does not persuade us, therefore, that the cited references fail to teach or suggest generating an audible tone when a change in an operational state of the device is detected, as recited in claim 29. And, contrary to Appellant’s contention, Owen describes generating a plurality of different tones to indicate the various conditions of the device. See id. (describing “auditory indicator” that generates “sounds, such as tones, buzzing, beeping, etc. to indicate error conditions within defibrillator” as well as an “[a]nnunciator [which] is preferably separate from auditory indicator 42, and produces a buzzing or other unique sound to indicate error conditions within defibrillator 10, particularly a low or drained power supply”). Weinberg, also cited by the Examiner, discloses a device that generates an alerting tone on a wireless pager worn by a user, the tone “start[ing] at a low sound level and then increas[ing] to a higher level until the pager is reset.” Weinberg 1:56–57. While Appellant asserts that Weinberg fails to disclose generating a plurality of different tones, Appellant fails to provide any specific discussion in relation to Weinberg that explains Appeal 2018-005379 Application 11/719,302 21 why “different tones” in claim 29 fails to encompass tones of different volumes, as disclosed in Weinberg. See Appeal Br. 19. In sum, given the cited references’ teachings that it was known in the art to generate multiple different tones indicating different operational states of medical devices of the type disclosed in Nova and Owen, Appellant does not persuade us that the Examiner erred in determining that a skilled artisan would have considered it obvious to configure such a device to generate a different tone for each of the conditions recited in claim 29. Accordingly, because Appellant does not persuade us, for the reasons discussed, that the Examiner erred in determining that the device recited in claim 29 would have been obvious in view of Nova, Owen, Mills, and Weinberg, we affirm the Examiner’s rejection of claim 29 over those references. Appeal 2018-005379 Application 11/719,302 22 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 6, 7, 10, 11, 13–17, 19, 22–29 112, second paragraph Indefiniteness 1–3, 6, 7, 10, 11, 13–17, 19, 22–29 1, 2, 6, 10– 15, 19, 23–25 103(a) Nova, Owen, Cromer 1, 2, 6, 10–15, 19, 23–25 3, 7, 16, 17, 22 103(a) Nova, Owen, Cromer, Weinberg 3, 7, 16, 17, 22 26–28 103(a) Nova, Owen, Cromer, Laroia 26–28 29 103(a) Nova, Owen, Mills, Weinberg 29 Overall Outcome 29 1–3, 6, 7, 10, 11, 13–17, 19, 22–28 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)(1)(iv). AFFIRMED IN PART Copy with citationCopy as parenthetical citation