Ex Parte Davis et al

Patent Trial and Appeal Board

Oct 11, 2017

12771475 (P.T.A.B. Oct. 11, 2017)

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.
12/771,475 04/30/2010 Jon P. Davis 1023-899US01 1805
71996 7590 10/13/2017
SHUMAKER & SIEFFERT , P.A
1625 RADIO DRIVE , SUITE 100
WOODBURY, MN 55125
EXAMINER
ALTER MORSCHAUSER, ALYSSA MARGO
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
10/13/2017 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):
pairdocketing @ ssiplaw.com
medtronic_neuro_docketing @ cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JON P. DAVIS, STEVEN M. GOETZ,
NATHAN A. TORGERSON, ASHISH SINGAL, LYNN A. DAVENPORT,
RAJEEV M. SAHASRABUDHE, SHYAM GOKALADAS,
JOEL A. ANDERSON, LEROY L. PERZ, and SCOTT E. STRAKA
Appeal 2016-006059
Application 12/771,4751
Technology Center 3700
Before DONALD E. ADAMS, JOHN G. NEW, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of the decision entered July 21, 2017
(“Decision”) reversing the rejections of record and entering a new ground of
rejection under 35 U.S.C. § 102(e) over Crowley.2
We deny the requested relief.
1 Appellants identify the real party in interest as “Medtronic, Inc. [], the
assignee of record, and Medtronic pic of Dublin, Ireland, the ultimate parent
entity of Medtronic, Inc.” (App. Br. 3).
2 Crowley et al., US 2009/0099625 Al, published Apr. 16, 2009.
Appeal 2016-006059
Application 12/771,475
ANALYSIS
Appellants do not separately argue the claims. Therefore, we limit
our analysis to Appellants’ representative claim 1.
Initially, we note Appellants’ argument relies heavily on the
disclosure of Crowley’s Figure 2 (see Req. Reh’g. 4—6). The Decision,
however, does not cite Crowley’s Figure 2, and any portions of Crowley’s
disclosure cited in the Decision that may reference Figure 2 were not the
sole basis for finding the subject matter of Appellants’ claimed invention
anticipated by Crowley.
Nevertheless, Appellants contend that the Decision misapprehends the
following three features of Appellants’ claimed invention:
First, Appellants contend that the Decision incorrectly determined that
“Crowley describes the receipt of proposed ‘new’ therapy parameters that
are different from the ‘original’ parameters, and subsequently ‘presents an
energy consumption estimate’ (in the form of a predicted service date) to a
user via the programmer based on the proposed ‘new’ parameters” (Req.
Reh’g 4). We are not persuaded (see Decision 13—15).
Second, Appellants contend that the Decision incorrectly determined
“that Crowley inherently discloses that the processor of the programmer
‘determines when the energy consumption estimate is above a certain level’
based on Crowley’s description of a user declining the new proposed therapy
parameters after the predicted service date is indicated to the user” (Req.
Reh’g 4 (emphasis omitted)). We are not persuaded (see Decision 13—15).
Third, Appellants contend that the Decision incorrectly determined
that Crowley inherently discloses that the processor of the
programmer presents a recommendation of at least one of the
programming options to reduce the energy consumption
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Appeal 2016-006059
Application 12/771,475
estimate to the user in response to the determination that the
energy consumption estimate is above the certain level based on
the alleged description of Crowley that the programmer, in
response to the user declining the proposed therapy parameters,
changes “the device’s proposed programming, i.e. resetting the
therapy parameters back to an original setting, to reduce the
energy consumption of the implantable medical device.
(Req. Reh’g 4 (emphasis omitted).) We are not persuaded (see Decision 15-
lb; see also id. at 13—15). In view of the foregoing, we find that although
Appellants may disagree with our analysis, Appellants’ contentions have not
identified any issue of fact or law that we overlooked or misunderstood in
reaching our conclusion of obviousness (see Req. Reh’g 4).
We recognize Appellants’ contention that
the Decision[’s] . . . position on the alleged inherent
characteristics appears to rely on the assumption that the user in
the process of [Crowley’s] FIG. 2 declines the proposed “new”
therapy parameters only when the predicted service date for the
proposed “new” therapy parameters is less than the service date
for the “original” parameters.
(Req. Reh’g 5). We are not persuaded.
Initially, we note that Appellants’ claim 1 does not require the
selection of a programming option (see Decision 2 (claim 1) (“1. A
programmer for an implantable medical device comprising: ... a processor
. . . determines one or more programming options that, if selected, would
alter the selected stimulation therapy parameters and reduce the energy
consumption estimate”) (emphasis added)). Consistent with the
requirements of Appellants’ claim 1, “Crowley discloses that an operator
may select ‘one or more therapy parameters[, which relate to programming
options, that] optimize battery life[,] optimize therapy efficacy[, or] balance
battery longevity with therapy efficacy’ (FF 13, see FF 6)” (Decision 14
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Appeal 2016-006059
Application 12/771,475
(alteration original)). In this regard, “Crowley discloses a method of
operating a programmable device that comprises ‘reviewing the predicted
elective service date of the power source and selecting or declining the one
or more proposed therapy parameters based on the indicated predicted
elective service date, and transmitting the selected therapy parameters to the
device’[]” (Decision 14). Thus, notwithstanding Appellants’ contentions to
the contrary, Appellants failed to establish an evidentiary basis on this
record to support a finding that Crowley fails to meet the requirements of
Appellants’ claim 1.
For the foregoing reasons, we are not persuaded by Appellants’
contention that “[njowhere does Crowley describe that the user only declines
the proposed ‘new’ therapy parameters in the process of FIG. 2 of Crowley
only when the predicted service date under the proposed ‘new’ therapy
parameters is less than/shorter than the service date under the ‘original’
therapy parameters” (Req. Reh’g 5; see also id. at 6 (Crowley’s 141 “does
not support a characterization that Crowley describes that the proposed
‘new’ therapy parameters are only declined when the predicted service date
under the proposed ‘new’ therapy parameters is less than/shorter than the
service date under the ‘original’ therapy parameters”)). Further, Appellants’
contentions, which are limited to Crowley’s Figure 2 and paragraph 41, fail
to account for the broader disclosure of Crowley relied upon in the Decision
(see Decision 8—16).
In addition, Appellants fail to establish an evidentiary basis on this
record to support a finding that Appellants’ claim 1 requires a user to select
a programming option (see Decision 2 (claim 1) (“1. A programmer for an
implantable medical device comprising: ... a processor . . . determines one
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Application 12/771,475
or more programming options that, if selected, would alter the selected
stimulation therapy parameters and reduce the energy consumption
estimate”) (emphasis added)). Therefore, we are not persuaded by
Appellants’ contention that “one of skill in the art would have recognized
that the description of Crowley does not preclude a user from declining the
proposed ‘new’ therapy parameters in the process of [Crowley’s] FIG.2
when the predicted service date is greater/longer than the service date under
the ‘original’ therapy parameters, . . which is consistent with Appellants’
claim 1 (Req. Reh’g 6).
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REHEARING DENIED
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