Ex Parte Cinbis et al

Patent Trial and Appeal Board

Aug 16, 2016

13190737 (P.T.A.B. Aug. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/190,737 07/26/2011
27581 7590 08/18/2016
Medtronic, Inc. (CRDM)
710 MEDTRONIC PARKWAY NE
MS: LC340 Legal Patents
MINNEAPOLIS, MN 55432-9924
FIRST NAMED INVENTOR
Can Cinbis
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.
P0039907.00\LG10126.L33 2744
EXAMINER
CASILLASHERNANDEZ, OMAR
ART UNIT PAPER NUMBER
2689
NOTIFICATION DATE DELIVERY MODE
08/18/2016 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):
medtronic_crdm_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CAN CINBIS, MICHAEL A. SCHUGT, and
RICHARD J. O'BRIEN
Appeal2015-000303
Application 13/190,737
Technology Center 2600
Before BRUCE R. WINSOR, DANIEL N. FISHMAN, and
MICHAEL M. BARRY, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1-20, which constitute all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest identified by Appellants is Medtronic, Inc. App.
Br. 2.
Appeal2015-000303
Application 13/190,737
STATEMENT OF THE CASE
Appellants' disclosed invention "relates generally to medical devices
and, in particular, to a medical device system and associated method for
wireless communication." Spec. 1: 5-7. Claim 1, which is illustrative, reads
as follows:
1. A medical device system, comprising:
a first device comprising a first power supply, a
physiological sensor for sensing a signal in a patient, and
a first communication circuit; and
a second device comprising a second power supply
and a second communication circuit configured for
bidirectional communication with the first
communication circuit,
the first device comprising a control processor
configured to provide power from the first power supply
to the first communication circuit according to a first
communication wake up mode by which the first
communication circuit is woken up from a sleep state in
which power is not coupled to the first con1n1unication
circuit to an awake state in which the first
communication circuit is fully powered for
communication, the first wake up mode set for a first
time period, and according to a second communication
wake up mode by which the first communication circuit
is woken up from the sleep state to the awake state, the
second wake up mode set for a second time period, the
second communication wake-up mode established by
the second device.
The Examiner relies on the following prior art in rejecting the claims:
Stokes et al.
("Stokes")
Juran et al.
("Juran")
us 5,814,089
us 6,154,675
2
Sept. 29, 1998
Nov. 28, 2000
Appeal2015-000303
Application 13/190,737
Hill et al.
("Hill")
McCabe et al.
("McCabe")
Swoyer et al.
(''Swoyer")
Kates
Goyal et al.
("Goyal")
US 2008/0046038 Al Feb.21,2008
US 7,751,890 B2 July 6, 2010
US 2010/0217347 Al Aug.26,2010
US 7,893,828 B2 Feb. 22, 2011
WO 2010/126342 A2 Nov. 4, 2010
Claims 1, 5, 8, 11, 15, and 18 stand rejected under 35 U.S.C. 103(a) as
being unpatentable over Hill and Kates. See Final Act. 3-5.
Claims 2, 9, 12, and 19 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Hill, Kates, and Goyal. See Final Act. 5-7.
Claims 3, 4, 13, and 14 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Hill, Kates, and Juran. See Final Act. 7-8.
Claims 6 and 16 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Hill, Kates, and McCabe. See Final Act. 8-9.
Claims 7 and 17 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Hill, Kates, and Swoyer. See Final Act. 9-10.
Claims 10 and 20 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Hill, Kates, and Stokes. See Final Act. 10-12. See Final
Act. 10-12.
Rather than repeat the arguments here, we refer to the Briefs ("App.
Br." filed Apr. 29, 2014; "Reply Br." filed Sept. 26, 2014) and the
Specification ("Spec." filed July 26, 2011) for the positions of Appellants
and the Final Office Action ("Final Act." mailed Sept. 9, 2013) and
Examiner's Answer ("Ans." mailed July 28, 2014) for the reasoning,
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Application 13/190,737
findings, and conclusions of the Examiner. Only those arguments actually
made by Appellants have been considered in this decision. Arguments that
Appellants did not make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2013).
ISSUE
The salient issue presented by Appellants' contentions is whether the
Examiner errs in finding the combination of Hill and Kates teaches or
suggests:
a first communication wake up mode by which [a] first
communication circuit is woken up from a sleep state in
which power is not coupled to the first communication
circuit to an awake state in which the first
communication circuit is fully powered for
communication, the first wake up mode set for a first
time period, and according to a second communication
wake up mode by which the first communication circuit
is \voken up from the sleep state to the a\vake state, the
second wake up mode set for a second time period, the
second communication wake-up mode established by [a]
second device
(emphases added), as recited in claim 1.
ANALYSIS
The Examiner relies on Hill to teach "a first communication wake up
mode ... set for a first time period, and ... a second communication wake
up mode ... established by a second device," as recited in claim 1. Final
Act. 3--4 (citing Hill i-fi-f 19, 35, 37, Fig. 3). The Examiner finds Kates, when
combined with Hill, teaches the "second communication wakeup mode
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Application 13/190,737
... set for a second time period," as recited in claim 1. Final Act. 4. The
passage of Kates cited by the Examiner teaches the following:
In one embodiment, the sensor unit provides two wake-
up modes, a first wake-up mode for taking measurements (and
reporting such measurements if deemed necessary), and a
second wake-up mode for listening for commands from the
central reporting station. The two wake-up modes, or
combinations thereof, can occur at different intervals.
Kates col. 2, 11. 40-45.
Appellants contend:
[Kates's] "wake-up modes" ... are clearly not modes "by which
the first communication circuit is woken up from a sleep state in
which power is not coupled to the first communication circuit to
an awake state in which the first communication circuit is fully
powered for communication," as clearly and distinctly required
by the pending claims.
In sharp contrast to a wake up mode by which a
communication circuit is woken up, Kates' [ s] alleged "wake-up
modes" are the operations of the sensor unit after wake up has
already occurred. In other words, Kates' [ s] alleged "wake up
modes" are modes of sensor unit operation during the time the
sensor is awake.
App. Br. 6-7. We agree with Appellants' claim construction, but are
unpersuaded of Examiner error.
The Specification unambiguously states the following:
As used herein, a "communication wake-up mode" refers to the
method by which the communication circuitry is woken up from
a "sleep" state, in which power is not coupled to the sensing
device communication circuitry, to an "awake" state, in which
the communication circuitry is fully powered for bidirectional
communication with the communication hub.
Spec. 8:29-9:4 (emphasis added). We agree with Appellants that Kates uses
the term "wake-up mode" to refer to modes of operation while the
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Application 13/190,737
communication circuit is awake and not to methods of waking the
communication circuit. That said, however, we are unpersuaded of error.
The Examiner relies on Hill, not Kates, to teach the first and second
communication wake up modes. See Final Act. 3--4. "[O]ne cannot show
non-obviousness by attacking references individually where, as here, the
rejections are based on combinations of references." In re Keller, 642 F.2d
413, 426 (CCPA 1981). "[T]he test [for obviousness] is what the combined
teachings of the references would have suggested to [one] of ordinary skill
in the art," id. at 425, who is "a person of ordinary creativity, not an
automaton," KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007), and
whose inferences and creative steps we may consider, id. at 418. Appellants
do not dispute that Hill teaches more than one wake-up mode. In the
passage cited by the Examiner, Kates teaches initiating communication
wakeup modes at different intervals. See Kates col. 2, 11. 40--45.
Furthermore, Kates teaches that the wake up calls may be different in that
they may involve different ones or combinations of Kates' s "wake-up
modes," i.e., different modes of sensor operation. Thus, contrary to
Appellants' arguments (see App. Br. 8), we agree with the Examiner that
Kates teaches two or more different wake-up calls at different intervals (see
Ans. 5). One of ordinary skill in the art, using no more than ordinary
creativity, would have recognized that Kates's different wake-up calls at
different intervals could be initiated by different ones of Hill's
communication wake up modes. In addition, we note that given the breadth
of the definition in the Specification of "communication wake-up mode" any
variation whatsoever in the method by which the communication wake-up
mode is initiated, such as different wake-up intervals or different sensor
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Application 13/190,737
operating modes enabled during different wake-up periods, is encompassed
by the broadest reasonable interpretation of different "communication wake-
up modes."
Appellants contend, for the first time in the Reply Brief, as follows:
[C]laim 1 ... sets forth a first device comprising a first power
supply, a second device having a second power supply, and a
processor configured to provide power to a communication
circuit of the first device according to a first wake up mode and
according to a second wake up mode, the second wake up mode
established by the second device. Neither Kates nor Hill, alone
or in combination, teach or suggest a first device comprising a
first power supply, a second device having a second power
supply, and a processor configured to provide power to a
communication circuit of the first device according to a first
wake up mode and according to a second wake up mode, the
second wake up mode established by the second device.
Reply Br. 3.
Appellants' argument, which could have been presented in the Appeal
Brief; is untimely and waived. See 37 C.F.R. § 41.41(b)(2); see also. Ex
parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative)
("Properly interpreted, the Rules do not require the Board to take up a
belated argument that has not been addressed by the Examiner, absent a
showing of good cause.") (Discussing arguments raised for the first time in a
reply brief). Were we to automatically consider such newly raised
arguments, "[r]ather than reviewing a record for error, the Board would be
considering, in the first instance, findings of fact proposed by the
Appellant[s], but not weighed by the Examiner [in the Examiner's Answer]
against the other evidence of record." Borden, 93 USPQ2d at 1475. In
addition, Appellants' argument consists of no more than a paraphrasing of a
claim limitation and conclusory statement that the relied-upon references do
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not teach or suggest the claim limitation. Such unsupported attorney
argument is unpersuasive. Cf 37 C.F.R. § 41.37(c)(l)(iv) ("A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim."); see also In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art."); cf In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art.").
CONCLUSION
Appellants' contentions and arguments do not demonstrate error in the
rejection of independent claim 1. Appellants argue independent claim 11
together with claim 1. See App. Br. 8. Appellants argue that none of Goyal,
Juran, and McCabe cure the alleged deficiencies of Hill and Kates, but do
not otherwise separately argue the patentability of claims 2-10 and 12-20,
which depend from claims 1 and 11 respectively. See App. Br. 9-11.
Accordingly, we sustain the rejections over various combinations of Hill,
Kates, Goyal, Juran, McCabe, Swoyer, and Stokes of claims 1-20.
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DECISION
The decision of the Examiner to reject claims 1-20 is affirmed.
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(f), 41.52(b) (2013).
AFFIRMED
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