Ex Parte AXNESS

Patent Trial and Appeal Board

Aug 29, 2018

14780795 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/780,795 09/28/2015 DAVID ROY AXNESS
24737 7590 08/31/2018
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2013P00454WOUS 5955
EXAMINER
MALAMUD, DEBORAH LESLIE
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
08/31/2018 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID ROY AXNESS
Appeal2017-008173
Application 14/780,795 1
Technology Center 3700
Before RICHARD M. LEBOVITZ, MICHAEL J. FITZPATRICK, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to a portable defibrillator
apparatus. The Examiner rejected the claims under 35 U.S.C. § 102 as
anticipated and under 35 U.S.C. § 103 as obvious. We have jurisdiction
under 35 U.S.C. § 6(b). The§ 102 and§ 103 rejections are reversed, but a
new ground of rejection pursuant 37 C.F.R. § 41.50(b) is set forth under
35 U.S.C. § 112.
STATEMENT OF CASE
Claims 1-18 stand finally rejected by the Examiner as follows:
1 The Appeal Brief ("App. Br.") (dated Jan. 26, 2017) lists Koninklijke
Philips N.V., Eindhoven, The Netherlands, as the real party in interest.
Appeal2017-008173
Application 14/780,795
Claims 1-8 and 10-18 under 35 U.S.C. § I02(a)(l) as anticipated by
Kaib (U.S. Pat. No. 6,169,387 Bl, issued Jan. 2, 2001) (hereinafter, "Kaib").
Examiner's Answer ("Ans.") 2.
Claim 9 under 35 U.S.C. § 103 as obvious in view of Kaib. Ans. 4.
There are three independent claims on appeal, claims 1, 8, and 10.
Claim 1, which is representative of the rejected claims, is reproduced below:
1. A portable defibrillator apparatus comprising:
- an electrode connector;
- an operator actuated button;
- an automatic power on circuit operable to actuate the
defibrillator independent of the operator actuated button in
response to an activation input; and
- a controller in electrical communication with the
electrode connector, the operator actuated button and the
automatic power on circuit, the controller operable to detect a
pattern of events and further operable to disable the automatic
power on circuit in response to the detected pattern of events.
CLAIM INTERPRETATION
Before a claim can be compared to the prior art, it must be properly
interpreted. For this reason, we begin with claim interpretation.
The following disputed claim limitation appears in independent claims
1 and 8:
a controller in electrical communication with the electrode
connector, the operator actuated button and the automatic
power on circuit, the controller operable to detect a pattern
of events and further operable to disable the automatic
power on circuit in response to the detected pattern of
events
Claim 1 (Appendix A).
The meaning of the phrase "pattern of events" is at issue in the
rejections.
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During patent examination proceedings, claim terms are given "the
broadest reasonable meaning ... in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant's specification." In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Thus, we first look to the
Specification for guidance as to the claim's meaning.
The Specification does not provide a definition of "pattern of events,"
but it contains the following pertinent descriptions:
In accordance with the objectives of the present
invention, an improved automatic power on feature for a
defibrillator is described which detects likely circumstances of
inadvertent activation. The invention generally encompasses
the detecting that there is a pattern of the defibrillator
powering on automatically and not being used for therapy
or diagnostic evaluation, e.g. a typical intended use. When
the defibrillator detects such a pattern of events, the
automatic power on feature is disabled. Then, when the AED
[ automated external defibrillator] is used in a manner that
indicates the AED has been handled by a human such as
replacing the battery or powering on the AED manually via the
on/off switch, the automatic power on feature is re-enabled.
Spec 2:22-30 ( emphasis added).
In operation, the automatic power on circuit senses a case
opening, and sends an activation signal to controller 206.
Controller 206 in turn retrieves data of previous activation
events from memory 230. If the previous events combined
with the present activation indicate that the activation is the
latest in a pattern of events that indicates a repeated
inadvertent activation, then controller 206 disables the
automatic power on circuit and returns the defibrillator to a
standby condition. Return to standby may occur after the
timeout period has passed.
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In a preferred embodiment, the pattern of events is
comprised of a series of detected automatic power on
activations followed only by a timeout period deactivation,
with no intervening activity.
Spec. 5:7-16 (emphasis added).
The above-reproduced disclosures in the Specification are consistent
with a "pattern of events" requiring more than one event ("retrieves data of
previous activation events," "series" of activations) to disable the automatic
power on circuit, namely, the controller takes into account the past history of
events to determine whether to disable the power of the defibrillator.
The events must occur in a "pattern," which absent a definition in the
Specification, we construe to have its ordinary and customary meaning of a
"regular and intelligible form or sequence discernible in the way in whkh
something happens or is done."2
The only detected event described in the Specification (see above) is
of an "activation event" in which the defibrillator powers on. The
Specification teaches that when more than one activation takes place, and
the events are determined to be inadvertent, the "automatic power on circuit"
is disabled to prevent further activation events from taking place and to
conserve battery power (Spec. 2:10-12). Independent claims 1 and 8 are not
expressly limited to an event being an inadvertent "activation" or "power
on" event and we do not read preferred embodiments into a claim. "[A]
particular embodiment appearing in the written description may not be read
into a claim when the claim language is broader than the embodiment."
SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
2 https://en.oxforddictionaries.com/definition/pattern ( definition 1.2)
( accessed Aug. 7, 2018).
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2004). Thus, an "event" can be any action that the recited "controller" is
programmed to detect. See Ans. 5.
Independent claim 10 has a step of "automatically activating the
defibrillator with the automatic power on circuit" and then a subsequent step
of detecting a pattern of events "based on the automatically activating step."
We interpret "based on" to mean that the detected events include the event
of automatically activating the defibrillator. Thus, claim 10 is narrower in
scope than claims 1 and 8, by requiring an event which is automatic
activation.
REJECTIONS BASED ON KAIB
The Examiner found that Kaib describes a portable defibrillator
apparatus comprising all the limitations of the independent claims. Ans. 2-
3. With respect to the limitation of the claims requiring "the controller
operable to detect a pattern of events and further operable to disable the
automatic power on circuit in response to the detected pattern of events," the
Examiner cites Kaib, at column 5, lines 40-49, column 6, line 58----column 7,
line 19, and col. 6, lines 40-49 and lines 58---61. Ans. 3, 5---6.
Kaib teaches:
The monitor-defibrillator 12 also makes adjustments for
depletion of battery 18 capacity during periods when the device
is not being used. When not in use ( such as when stored on a
shelf or taken by the patient on a day's outing as a spare device)
the monitor-defibrillator 12 will automatically power itself up
at specified intervals and make adjustments to the battery run
time to compensate for energy losses due to self-discharge of
the battery and current draw of monitor-defibrillator 12
components when powered down.
Kaib, col. 5, 11. 40-49.
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The above-reproduced passage refers to automatically powering up
the defibrillator to adjust for battery run time. However, the disclosure does
not expressly teach that the circuit for powering up is subsequently disabled
as required by the rejected claims. Nonetheless, it would be understood
from this disclosure that once the battery run time is adjusted, the monitor-
defibrillator would be turned off. Thus, the detected "event," that led to
disabling the automatic power on circuit would be the charged battery.
However, Kaib only described the detection of one "event," not a "pattern of
events" as required by the claims.
The Examiner states that "it is clear [from the disclosure at column 5,
lines 40-49] that the device of Kaib detects a pattern of self-discharge
energy losses, and makes adjustments to the battery run time as a result."
Ans. 6. However, the Examiner's statement does not adequately explain
how the cited disclosure of Kaib describes or suggests detecting a "pattern of
events" and turning off or disabling the circuit "in response to the detected
pattern of events" as required by all the independent claims.
The Examiner also cited the following disclosure from Kaib as
describing the disputed limitation of the claims:
Use of the slow charge mode permits the converter to be
operated and a therapy pulse delivered to the patient when the
battery 18 capacity is low.
If during operation of the converter-defibrillator 19 in the
slow charge mode the battery 18 voltage falls below a level at
which the monitor-defibrillator 12 can reliably operate the
converter-defibrillator 19, then the monitor-defibrillator 12 will
deactivate the converter and evaluate the energy capability
stored in the converter.
Kaib, col. 6, 11. 40-49.
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The Examiner stated that this disclosure shows "it is the energy level
of the system that is detected, and used to either continue system power or
disable operating power, which constitutes the controller operable to detect a
pattern of events and further operable to disable the automatic power on
circuit in response to the detected pattern of events." Ans. 6.
We agree with the Examiner that the "energy level" of the system can
serve as a detected "event" in accordance with the claims. Kaib teaches that
when the energy or voltage of the battery falls below a level, a "converter" is
deactivated. The Examiner appears to have determined that the "converter"
of Kaib corresponds to the "automatic power on circuit" recited in rejected
claims 1, 8, and 10. The Examiner states that a pattern of events is detected
(Ans. 6), which we understand to be a pattern of detecting more than one
event of the battery voltage falling below a certain level. Even if it is
assumed that the battery does fall below a certain level more than once, the
disclosure at column 6, lines 40-49 relied upon by the Examiner, and
reproduced above, does not teach that more than one event of this kind
occurs and, that in response to the more than one event, the "automatic
power on circuit" is disabled as required by the claims. Rather, it appears
that only one event takes place when the battery voltage falls. The Examiner
did not adequately explain how this disclosure describes or suggests
detecting a "pattern of events" and turning off or disabling the circuit "in
response to the detected pattern of events" as required by the all the
independent claims.
The Examiner also cited Kaib for its teaching of:
If the monitor-defibrillator 12 determines that the battery
18 capacity has fallen below a level at which the system
performance data is in danger of being corrupted then the
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monitor-defibrillator 12 will remove operating power. The
removal of operating power will reserve the remaining battery
18 capacity for maintenance of the data storage/processor 22.
Kaib, col. 6, 11. 58---64.
The cited passage describes deactivating the operating power of the
defibrillator when the energy level falls below a certain level, but does not
teach detecting a series of events in which the battery level falls and then
subsequently disabling the power. Even if the monitor-defibrillator detects
the battery level at multiple times, the Examiner did not establish that the
monitor-defibrillator is "operable to disable the automatic power on circuit
in response to the detected pattern of events," namely, to consider the past
history of the battery when disabling the converter.
The last passage cited by the Examiner as describing the disputed
limitation is as follows:
Since this low level of battery 18 capacity is inadequate for
reliable operation of the monitor-defibrillator, the best possible
use of the remaining battery 18 capacity is to preserve the
operational history of the device stored in the data
storage/processor 22. When this state has been reached, the
monitor-defibrillator will refuse to power up until connected to
the patient base station 30. If required, the patient base station
30 will provide additional energy to the monitor-defibrillator 12
to insure proper functioning during this power up sequence.
The patient base station will then retrieve the operational
history from the monitor-defibrillator 12 and recharge the
battery 18.
Kaib, col. 6, 1. 65---col. 7, 1. 10.
Here, Kaib teaches when the battery level is at a certain low amount,
the "the monitor-defibrillator will refuse to power up." Thus, the power on
circuit is disabled, but consistent with the disclosures quoted above, there is
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no evidence of a controller that is "operable to disable the automatic power
on circuit in response to the detected pattern of events."
Because the Examiner did not provide adequate evidence that the
defibrillator described in Kaib is "operable to disable the automatic power
on circuit in response to the detected pattern of events" as required by the
claims, the anticipation rejection of claims 1 and 8 is reversed. Claim 10
also requires the detection of a pattern of events and disabling the automatic
power on circuit based on this detecting step. Consequently, the anticipation
rejection of claim 10 is also reversed. The anticipation rejection of
dependent claims 2-7 and 11-18 is also reversed for the same reasons.
The § 103 rejection of claim 9 based on Kaib is also reversed because
dependent claim 9 incorporates all the limitations of claim 8 upon which it
depends and the Examiner did not explain how Kaib renders the limitations
of claim 8 obvious to one of ordinary skill in the art.
NEW GROUND OF REJECTION
As explained in the Claim Interpretation section above, the only event
that we identified in the Specification is "activation" of the defibrillator
when it powers on. Consistently, the Appeal Brief in describing the claimed
subject matter only refers to the embodiment of "having an automatic
power-on feature that turns the defibrillator on when the case lid is opened."
Appeal Br. 4. The Appeal Brief further explains:
If the case opening sensor or magnet fails or malfunctions, the
defibrillator may undergo spurious activations and
deactivations. If the carry case becomes overstuffed with
accessories, the case surface may become distorted such that the
case opening sensor may activate spontaneously. Repeated
activations and deactivations may quickly deplete the battery.
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Id.
The Appeal Brief describes the inventors as having solved this
problem "by providing a circuit and controller which disables the automatic
power-on feature upon sensing a pattern events, e.g. of inadvertent
activations/deactivations, as described above." Id. at 5.
Although the activation/deactivation events are the only events we
identified in the Specification and which are described by Appellant in the
Appeal Brief, the claims are not so limited, but cover any pattern of any
events. The Specification, however, does not disclose how a controller
would be made operable to detect any pattern of any events and then disable
the automatic power on circuit in response to these events.
35 U.S.C. § 112(a) requires that the specification of a patent describe
"the manner and process of making and using [ the invention], in such full,
clear, concise, and exact terms as to enable any person skilled in the art to
which it pertains ... to make and use the same." A specification is not
enabling if a person of ordinary skill in the art would be unable to practice
the invention without "undue experimentation." In re Wands, 858 F.2d 731,
737 (Fed. Cir. 1988). The only embodiment described in the Specification is
of detecting an activation event. There is no direction or guidance on how to
make the controller operable to detect other types of events and no working
examples of other events; in contrast, claims 1 and 8 cover any pattern of
any events, while only one pattern of specific events is enabled. See Wands,
858 F.2d at 737.
Accordingly, pursuant to 37 C.F.R. § 4I.50(b), claim 1, 7, 8, and 9 are
rejected under 35 U.S.C. § 112(a) as not being enabled for the full scope of
the claims. This is a new ground of rejection.
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Claims 2---6 and 10-18 are not subject to this rejection because the
claims require the detected events to comprise activation of the defibrillator
which is enabled by the Specification.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 4I.50(b) also provides:
When the Board enters such a non-final decision, the
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. The new
ground of rejection is binding upon the examiner unless
an amendment or new Evidence not previously of Record
is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant
may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding
be reheard under §41.52 by the Board upon the same
Record. The request for rehearing must address any new
ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in
entering the new ground of rejection and also state all
other grounds upon which rehearing is sought.
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Further guidance on responding to a new ground of rejection can be
found in the MPEP § 1214.01.
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). See 37 C.F.R.
§§ 41.50(±), 4I.52(b).
REVERSED; 37 C.F.R. § 4I.50(b)
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