Ex Parte Chapman et al

Patent Trial and Appeal Board

Sep 27, 2012

10176705 (P.T.A.B. Sep. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte FRED W. CHAPMAN, JOSEPH L. SULLIVAN, and
SCOTT O. SCHWEIZER
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Appeal 2010-009232
Application 10/176,705
Technology Center 3700
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Before: STEVEN D.A. MCCARTHY, BRETT C. MARTIN, and
ANNETTE R. REIMERS, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-009232
Application 10/176,705
2
STATEMENT OF CASE
Fred W. Chapman et al. (Appellants) seek review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 1, 2, 4-11, and 13-18. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

THE INVENTION
Appellants’ claims are directed generally to “medical devices, and
more particularly, to defibrillators that deliver energy to a patient.” Spec.
1:5-6. Claim 1, reproduced below with emphasis added, is illustrative of the
claimed subject matter:
1. A method comprising:
identifying a dosage of at least one defibrillation shock
parameter selected for a patient for a pending defibrillation
shock to be delivered to the patient with a defibrillator,
wherein the defibrillation shock parameter is selected
from the following group: energy and defibrillation current;
after identifying the dosage, selecting a frequency of an
excitation current as a function of the identified dosage;
applying the excitation current to the patient at the
selected frequency;
measuring an impedance of the patient by measuring a
response of the patient to application of the excitation current;
delivering the defibrillation shock to the patient; and
modulating the defibrillation shock based on the
measured impedance to deliver the identified dosage to the
patient.

REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wuthrich US 6,647,290 B2 Nov. 11, 2003
Appeal 2010-009232
Application 10/176,705
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REJECTION
The Examiner made the following rejection:
Claims 1, 2, 4-11, and 13-18 stand rejected under 35 U.S.C. § 103(a)
as obvious over Wuthrich.
ANALYSIS
Appellants challenge the rejection on numerous grounds, but the main
thrust of Appellants’ various arguments centers on a disagreement over “the
Examiner’s interpretation of the term ‘excitation current’ in claim 1 to be
met by a defibrillation shock as described in Wuthrich.” App. Br. 7. As the
Examiner correctly finds, Wuthrich teaches delivering a defibrillating shock
and as part of the shock delivery, it is susceptible of use in measuring
impedance of the patient. Ans. 3 (citing to Wuthrich col. 5:32-62).
Wuthrich then utilizes the impedance information to adjust a subsequent
defibrillation shock as desired. Id. at col. 5.
Appellants argue that “claim 1 separately recites both a defibrillation
shock and an excitation current, using different terms, one of ordinary skill
in the art would interpret the excitation current to be something other than a
defibrillation shock.” App. Br. 7. We do not find Appellants’ argument
persuasive simply on the grounds of the use of two separate terms. When
looking at a sequence of two defibrillating shocks, we agree with the
Examiner’s general theory that the first shock can arguably be considered an
excitation current and the second shock can then be considered a
defibrillation shock without violating the rule that the same element cannot
perform two functions. These are two discrete shocks and so, under the
Examiner’s theory, it is not the case that one shock is fulfilling both of these
limitations.
Appeal 2010-009232
Application 10/176,705
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The Examiner then stretches this interpretation of the claims to
conclude that because Wuthrich teaches adjusting a subsequent shock based
upon impedance information gained from a prior shock that it “would have
been obvious to one of ordinary skill in the art at the time the invention was
made to provide the step of selecting a frequency of an excitation current as
a function of the identified dosage in order to provide another waveform
parameter for variation in an applied current.” Ans. 5. We cannot sustain
the Examiner’s conclusion of obviousness based on this interpretation.
While, as noted above, we can accept the Examiner’s basic premise,
we conclude that once the frequency of the recited excitation current is
stated as being “a function of an identified dosage of at least one
defibrillation shock parameter” that Appellants’ argument becomes stronger.
Because Wuthrich teaches utilizing a defibrillating shock to obtain patient
impedance and does not have a separate excitation current, which
Appellants’ duly argue as noted above, we do not follow the Examiner’s
conclusion that the claimed excitation current that involves “selecting a
frequency” “as a function of the identified dosage” is obvious in light of
Wuthrich. See App. Br. 9.
As Appellants point out “Wuthrich discloses that waveform
parameters are determined for a defibrillation waveform, which is then
delivered and from which values indicative of impedance are sensed[,]”
whereas Claim 1 “specifically requires that the excitation current is applied
at a selected frequency that is selected as a function of an identified dosage.”
App. Br. 11. We further agree with Appellants’ that “one of ordinary skill in
the art would not have considered it obvious to have modified the device of
Wuthrich to select a frequency for delivery of a defibrillation shock or
shocks, much less to select the frequency as a function of a dosage for a
Appeal 2010-009232
Application 10/176,705
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pending defibrillation shock.” App. Br. 10. Accordingly, we cannot sustain
the Examiner’s rejection of claim 1 and its dependent claims as obvious over
Wuthrich.
We conclude that the arguments with respect to claim 1 apply
equally to claim 11 and its dependent claims 13-18 and reverse the rejection
of those claims for the same reasons as stated above.

DECISION
For the above reasons, we REVERSE the Examiner’s decision to
reject claims 1, 2, 4-11, and 13-18 as obvious over Wuthrich.
REVERSED

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