Ex Parte Davis et al

Patent Trials and Appeals Board

Feb 24, 2016

13073562 - (D) (P.T.A.B. Feb. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/073,562 03/28/2011
71996 7590 02/26/2016
SHUMAKER & SIEFFERT, P.A
1625 RADIO DRIVE, SUITE 300
WOODBURY, MN 55125
FIRST NAMED INVENTOR
Jon P. Davis
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.
1023-938US01/P0037705.0l 8147
EXAMINER
GETZOW, SCOTT M
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
02/26/2016 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):
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
Exparte JON P. DAVIS, DENNIS J. BOURGET, BRENT A. HUHTA, and
RAJEEV M. SAHASRABUDHE
Appeal2014-001952
Application 13/073,562
Technology Center 3700
Before LYNNE H. BROWNE, LISA M. GUIJT, and MARK A. GEIER,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jon A. Davis et al. (Appellants 1) appeal under 35 U.S.C. § 134(a)
from the Examiner's rejections of claims 1, 3-31, and 33--40. Appeal Br. 5.
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART and enter a NEW GROUNDS OF
REJECTION pursuant to 37 CPR§ 41.50(b).
1 According to Appellants, the real party in interest is Medtronic, Inc.
Appeal Br. 3.
Appeal2014-001952
Application 13/073,562
THE CLAIMED SUBJECT MATTER
Claims 1, 23, and 31 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal, with disputed limitations
italicized for emphasis.
1. A programming device comprising:
a touchscreen display;
a processor configured to:
control the display to present a graphical icon
comprising a scroll wheel, a rotary control wheel or an
omni-direction touch pad on a first portion of the display,
wherein the graphical icon is associated with a therapy
parameter,
detect a gesture-based contact between an object
and the first portion of the display, and
determine a value of the therapy parameter based
on the detection of the gesture-based contact; and
a communication module configured to transmit
information to the medical device to control the medical
device to deliver therapy based on the value of the
therapy parameter.
Appeal Br. 15 (Claims App.).
REJECTIONS
Claims 1, 3, 6, 15, 17, 18, 23, 30, 31, 33, and 35 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Goetz (US 2007/0203544 Al; pub.
Aug. 30, 2007).
Claims 4, 5, 7-14, 16, 19, 22, 24--29, 34, and 36-40 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Goetz and Hotelling (US
2008/0211784 Al; pub. Sept. 4, 2008).
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Application 13/073,562
Claims 20 and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Goetz and Newton (US 2010/0207911 Al; pub. Aug. 19,
2010) or Blasko (US 2006/0092177 Al; pub. May 4, 2006).
OPINION
Claims 1, 3, 6, 15, 17, 18, 23, 30, 31, 33, and 35-
Obviousness over Goetz
Regarding independent claims 1, 23, and 31, the Examiner finds, inter
alia, that Goetz discloses that "scroll wheels ... are considered to be the
equivalent of input media such as up/down arrows" (Final Act. 2 (citing
Goetz i-f 111) ), and that Goetz more specifically teaches that "arrows 124,
126[] displayed on a display screen 115 ... are equivalent input media to
scroll wheels." Ans. 2. The Examiner also finds that although Goetz's
"arrows 124, 126 are not used to determine a value of a therapy parameter,"
Goetz "clearly shows [up/down] arrows [on display screen 115] associated
[with] various therapy parameters, such as amplitude, pulse width, [and]
frequency." Ans. 2 (citing Goetz, Fig. 6).
The Examiner reasons that
[i]t is considered to be obvious that, since the arrows 124, 126
are the equivalent of scroll wheels, then the arrows associated
with the therapy parameters are also equivalent to scroll wheels.
[Nor] is [there any] teaching in Goetz that scroll wheels can only
be used for electrode combination selection [as with arrows 124,
126], [or] that scroll wheels should not, or cannot, be used for
determining therapy parameter values.
Ans. 3. The Examiner further reasons that "[t]o use a scroll wheel, along
with the associated processor that controls such scroll wheel, and to be on
the interface of the programmer, and to be associated with a therapy
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Application 13/073,562
parameter is considered to be obvious since such use of a scroll wheel would
yield merely predictable results." Final Act. 2.
Regarding independent claim 1, Appellants sole argument is that
"Goetz fails to disclose or suggest a programming device including a
processor configured to control the display to present a graphical icon
comprising a scroll wheel, a rotary control wheel or an omni-directional
touch pad on a first portion of the display." Appeal Br. 6-9. Appellants
present the same argument for the patentability of independent claims 23 and
31, which recite the same or similar limitation. See Id. at 9--10.
In particular, Appellants argue that "Goetz specifically differentiates
scroll wheels from user interface elements that may be presented on a
display screen of a programmer," in that "Goetz distinguishes wheels from
graphical user interface elements: '[K]eys, buttons, wheels and other input
devices may be provided on programmer 114, independent of display 115."'
Appeal Br. 6-7 (citing Goetz i-f 106). Appellants contend that, when read in
context, Goetz only discloses "scroll wheels in the context of physical
devices separate from a touchscreen graphical element." Id. at 7.
Appellants further contend that because arrow buttons are listed separately
from up/down and side-to-side arrows 124, 126 in paragraph 111, Goetz is
referring to "both graphical elements displayed at the display 115 and
physical elements separate from the display 115." Id. Finally, Appellants
contend that paragraph 214 is consistent in its reference to scroll wheels as a
physical input device separate from touch screen graphical icons by stating
that "[ t ]he stimulation field may be manipulated by a variety of input media,
including ... touchscreen keys, []scroll wheels,[] or other devices." Id.
(citation omitted).
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Application 13/073,562
We are persuaded by Appellants' argument. It is not entirely clear
whether or not paragraph 111 of Goetz, which is relied on by the Examiner,
discloses that scroll wheels are presented as graphical icons on touchscreen
display 115. Further, the Examiner does not explain why it would have been
obvious to use scroll wheels presented as graphical icons in view of Goetz.
Thus, the Examiner fails to make a prima facie case of obviousness.
Accordingly, we reverse the Examiner's rejection of independent
claims 1, 23, and 31, as unpatentable over Goetz, as well as claims 3, 6, 15,
17, 18, 30, 33, and 35 depending therefrom.
NEW GROUND OF REJECTION
We reject claims 1, 3, 6, 15, 17, 18, 23, 30, 31, 33, and 35 under 35
U.S.C. § 103(a) as unpatentable over Goetz and Hotelling. We adopt as our
own the Examiner's findings with respect to Goetz, as presented supra and
as applied to these claims, with exception of the Examiner's finding that
Goetz teaches a graphical icon comprising a scroll wheel, as claimed.
We find that Goetz teaches that "[ d]isplay screen 115 may be a
touchscreen such that interactive media may be placed on the screen" or
"[a]ltematively,[] wheels ... may be provided on programmer 114,
independently of display 115." Goetz i-f 106, Fig. 6. We further find that
Goetz teaches that "[ f]or each electrode combination selected by a user, the
user may also specify stimulation parameters as shown in FIG. 6." Goetz i-f
116 (emphasis added). Figure 6 of Goetz depicts interactive media on
touchscreen display screen 115 as up/ down arrows for inputting stimulation
(or therapy) parameters, such as amplitude, pulse width, and frequency.
Thus, Goetz discloses "present[ing] a graphical icon ... associated with a
therapy parameter," as recited in independent claims 1, 23, and 31, however,
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Application 13/073,562
Goetz does not explicitly disclose that the "graphical icon [may] compris[e]
a scroll wheel," as required by independent claims 1, 23, and 31, as
discussed supra.
We find that Hotelling discloses "display device 68 ... configured to
display a graphical user interface (GUI) 69 that provides an easy to use
interface between a user and a computer system," wherein the GUI presents
"graphical images." Hotelling i-f 61. Hotelling further discloses that "input
device 70 may be a touch screen that is positioned over or in front of display
68," explaining that "touch screen 70 has several advantages over other
input technologies such as ... mice[; for example, when] touch screen 70 is
positioned in front of the display 68[,] ... the user can manipulate the GUI
69 directly." Id. i-f 63. Hotelling also discloses that "the [user interface (UI)]
element can be a virtual scroll wheel" and discloses that "the virtual scroll
wheel can mimic an actual scroll wheel." Id. i-f 96 (emphasis added).
We reason that one of ordinary skill in the art, at the time of the
invention, would have been led to substitute the graphical up/down arrows
for inputting stimulation (or therapy) parameters as depicted on touchscreen
display 115 of Goetz' s Figure 6 with graphical icons, such as virtual scroll
wheels, as disclosed in Hotelling, because such a modification is a simple
substitution of one known element for another to obtain a predictable result.
Notably, "when a patent claims a structure already known in the prior art
that is altered by the mere substitution of one element for another known in
the field, the combination must do more than yield a predictable result."
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 416, 420 (2007) (citation omitted).
Moreover, a person of ordinary skill is also a person of ordinary creativity,
not an automaton. Id. at 421.
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Application 13/073,562
Alternatively, we reason that one of ordinary skill in the art, at the
time of the invention, would have been led to implement the scroll wheels
disclosed in Goetz, as virtual scroll wheels, as suggested by Hotelling, so
that the user can manipulate the GUI directly.
Claims 4, 5, 7-14, 16, 19, 22, 24-29, 34, and 36-40-
Obviousness over Goetz and Hotelling
Claims 4, 5, 7-12, 14, 16, 19, 22, 24-28, 34, and 36-39
Claims 4, 5, 7-12, 14, 16, 19, 22, 24--28, 34, and 36-39 depend from
independent claims 1, 23, and 31. Appeal Br. 15-24 (Claims App.).
Appellants argue that these claims "are patentable for at least the reasons
independent claims 1, 23, and 31 [are] patentable," as discussed supra, and
further that "Hotelling fails to overcome the deficiencies identified above
with respect to claims 1, 23, and 31." Id. at 13. We determine, as discussed
with respect to the New Ground of Rejection presented supra, that Hotelling
cures the deficiencies in the Examiner's findings with respect to independent
claims 1, 23, and 31. However, because we rely on support that is different
from the Examiner's findings, we designate our affirmance of dependent
claims 4, 5, 7-12, 14, 16, 19, 22, 24--28, 34, and 36-39 as a NEW
GROUND OF REJECTION.
Claims 13, 29, and 40
Appellants present a separate argument for the patentability of claims
13, 29, and 40, which depend from independent claims 1, 23, and 31. In
particular, Appellants argue that although Hotelling discloses that audible
feedback in the form of a clicking sound may be provided as knob 170 is
rotated, Hotelling's "clicking sound ... cannot reasonably be interpreted to
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Application 13/073,562
indicate the direction of the path that is traversed by the object," as recited in
claims 13, 29, and 31. Appeal Br. 11 (citing Hotelling i-f 88).
The Examiner's findings are twofold. First, the Examiner finds that
"if [Hotelling' s] virtual knob is turned, [the] clicking sound .... will
inherently indicate a direction - it will indicate that the knob is being turned
in the direction the user wants it to be turned." Final Act. 3 (citing Hotelling
i-f 88). We agree with Appellants that the Examiner's finding is incorrect, in
that the clicking sound disclosed in Hotelling is the same regardless of
whether Hotelling's virtual knob is turned clockwise or counter-clockwise,
and therefore, Hotelling does not disclose a direction of a path that is
traversed by the object, wherein the feedback device is configured to
generate audible feedback that indicates the direction, as required by claims
13, 29, and 40. See Hotelling i-f 88 ("Once knob 170 is displayed[,] ... the
user's fingers 176 can be positioned around the knob 170 similar to if it were
an actual knob[,] [and] audible feedback in the form of a clicking sound ...
may be provided as the knob 170 is 'rotated."').
Alternatively, the Examiner finds that "[ u ]sing sound to indicate
which direction a scroll wheel, or virtual knob of Hotelling, is being turned,
would merely assist the user in a known manner." Final Act. 3. The
Examiner provides the example of a person adjusting a volume knob,
finding that "[t]he change in volume of the sound would inherently indicate
the direction the knob [is] being turned." Id. The Examiner reasons that
"[t]o use a similar principle with the virtual knob of Hotelling, or scroll
wheel of Goetz, would be nothing more than an obvious design choice." Id.;
see also Ans. 3--4 (citing Hotelling i-fi-1 88, 71 ("a rotation gesture over a
volume knob causes volume increase/decrease"), and 96). The Examiner
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Application 13/073,562
considers it inconsequential that in the Examiner's example volume is both
the parameter and the audible feedback, as opposed to the volume only being
the audible feedback, as required in claims 13, 29, and 40, and not a therapy
parameter. Adv. Act. 2. 2
Appellants respond that "the [claimed] feedback is clearly different
than the parameter being changed in response to the gesture-based contact-
the value being determined based on the gesture-based contact is the value
of the therapy parameter (e.g., electrical current amplitude) and the feedback
being provided is audible feedback (i.e., sound)." Appeal Br. 12.
Appellants further submit that "[ e ]ven if one of ordinary skill in the art
would have consulted Hotelling and apprehended the Examiner's example,
one of ordinary skill in the art would have had no apparent reason to modify
Goetz to include a processor configured [as recited in claims 13, 29, and
40]." Id.
We are not persuaded by Appellants' argument. The Court in KSR
noted that design incentives and other market forces can prompt a person of
ordinary skill in the art to implement a predictable variation of a technique to
improve a device. KSR, 5501J.S. at 417. The Court further noted:
In many fields it may be that there is little discussion of obvious
techniques or combinations, and it often may be the case that
market demand, rather than scientific literature, will drive
design trends. Granting patent protection to advances that
would occur in the ordinary course without real innovation
retards progress and may, in the case of patents combining
previously known elements, deprive prior inventions of their
value or utilitv .
.;
2 Advisory Action mailed April 15, 2013.
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Application 13/073,562
ld. at 419. Here, the claimed functionality of generating audible feedback
that indicates the direction of a gesture-based contact between an object and
a touchscreen display is a predictable and natural advance of Hotelling's
audible feedback (i.e., clicking sound), in view of known adjusting knobs
that increase in volume when turned in one direction and decrease in volume
when turned in the opposite direction. In other words, the gap between the
prior art and the claimed invention is not so great as to render the claimed
subject nonobvious to one or ordinary skill in the arL Although Appellants
disagree that "it is inconsequential that the parameter that is adjusted is the
same as the audible feedback," other than explaining this difference between
the claims and the prior art, Appellants do not provide a reason why this is
so. Reply Br. 8, 9.
We determine, as discussed with respect to the New Ground of
Rejection presented supra, that Hotelling cures the deficiencies in the
Examiner's findings with respect to independent claims 1, 23, and 31, from
which claims 13, 29, and 40 depend. Thus, we sustain the Examiner's
rejection of claims 13, 29, and 40. However, because we rely on support
that is different from the Examiner's findings, with respect to the
independent claims, we designate our affirmance of dependent claims 13,
29, and 40 as a NEW GROUND OF REJECTION.
Claims 20 and 21- Obviousness over Goetz and Newton or Blasko
Claims 20 and 21 depend from independent claim 1. Appeal Br. 19
(Claims App.). Appellants argue that these claims "are patentable for at
least the reasons independent claim 1 is patentable," as discussed supra, and
further that "Newton and Blasko fail to overcome the deficiencies identified
above with respect to claim 1." Id. at 13. We determine, as discussed with
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Application 13/073,562
respect to the New Ground of Rejection presented supra, that Hotelling
cures the deficiencies in the Examiner's findings with respect to independent
claim 1. However, because we rely on support that is different from the
Examiner's findings, we designate our affirmance of dependent claims 20
and 21 as a NEW GROUND OF REJECTION.
DECISION
The Examiner's rejection of claims 1, 3, 6, 15, 17, 18, 23, 30, 31, 33,
and 35 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Goetz is
REVERSED.
The Examiner's rejection of claims 4, 5, 7-14, 16, 19, 22, 24--29, 34,
and 36-40 as unpatentable over Goetz and Hotelling is AFFIRMED and
designated as a NEW GROUND OF REJECTION pursuant to our authority
under 37 C.F.R. § 41.50(b).
The Examiner's rejection of claims 20 and 21 under 35 U.S.C.
§ 103(a) as unpatentable over Goetz and Newton or Blasko is AFFIRMED
and designated as a NEW GROUND OF REJECTION pursuant to our
authority under 37 C.F.R. § 41.50(b).
We enter a NEW GROUND OF REJECTION of claims 1, 3, 6, 15,
17, 18, 23, 30, 31, 33, and 35 under 35 U.S.C. § 103(a) as unpatentable over
Goetz and Hotelling pursuant to our authority under 35 C.F.R. § 41.50(b).
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(l) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
In addition to affirming the Examiner's rejections of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
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Application 13/073,562
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] NEW GROUND OF
REJECTION pursuant to this paragraph shall not be considered final for
judicial review."
37 C.F.R. § 41.50(b) also provides that Appellants, vv1THIN T\VO
~J_QNIJIS_ __ ERQJltTIIf~ __ D_AIE ___ Q_E _ _IH_E __ QB_CIS_IQ_N, must exercise one of
the following two options with respect to the NEW GROUNDS OF
REJECTION to avoid termination of the appeal as to the rejected claims:
(l) 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 proceeding
will be rernanded to the Examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
Should Appellants elect to prosecute further before the Examiner
pursuant to 3 7 C.F .R. § 41. 50(b )( 1 ), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affinned
rejections, the effective date of the affirmance is deferred until conclusion of
the prosecution before the Exarniner unless, as a mere incident to the limited
prosecution, the affinned rejections are overcome.
If AppeUants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejections, including any timely request for rehearing
thereof
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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)(l )(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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