Ex Parte Daynes et alDownload PDFPatent Trial and Appeal BoardMay 31, 201613191334 (P.T.A.B. May. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/191,334 07/26/2011 96139 7590 06/02/2016 MARGER JOHNSON -PHYSIO -CONTROL, INC. 888 SW 5th A venue, Suite 1050 PORTLAND, OR 97204 FIRST NAMED INVENTOR Nathan Woodruff Daynes 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. 7257-0039 _P40442.02 3890 EXAMINER VOORHEES, CATHERINE M ART UNIT PAPER NUMBER 3762 NOTIFICATION DATE DELIVERY MODE 06/02/2016 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): docketing@techlaw.com physio_control_docketing@cardinal-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NATHAN WOODRUFF DA YNES and JOHN CARL TON DA YNES Appeal2014-004794 Application 13/191,334 Technology Center 3700 Before JENNIFER D. BAHR, JOHN C. KERINS, and FREDERICK C. LANEY, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Nathan WoodruffDaynes and John Carlton Daynes (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-15. 1 We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. 1 Claims 16-24 have been withdrawn from consideration. Final Act. 2; Appeal Br. 16, Claims App. Appeal2014-004794 Application 13/191,334 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A transmitting external defibrillator for transmitting resuscitation event data to a receiving external defibrillator that is separate and distinct from the transmitting external defibrillator, the receiving external defibrillator including a first housing, a first energy storage module in the first housing for storing a first electrical charge, a first defibrillation port for guiding via electrodes the first electrical charge to a person, and a first wireless communication module, the transmitting external defibrillator comprising: a second housing; a second energy storage module in an interior of the second housing that stored a second electrical charge; a second defibrillation port adapted to be coupled to electrodes, and via which the second electrical charge was guided to the person; a memory in the interior of the second housing adapted to store event data about when the second electrical charge was guided to the person; a bump sensor in the interior of the second housing, for generating motion information of the second housing; a bump detector in the interior of the second housing configured to determine whether the second housing has been subjected to a local bump event based on the generated motion information, the local bump event including a physical touching of the transmitting and receiving external defibrillators; a second wireless communication module in the interior of the second housing; and a processor in the interior of the second housing configured to, responsive to a determination that a local bump event has occurred, cause the second communication module to establish a wireless communication link with the first communication module, 2 Appeal2014-004794 Application 13/191,334 in which the second communication module is further adapted to transmit a data signal configured to encode the resuscitation event data over the communication link. REJECTIONS I. Claims 1-15 stand rejected under 35 U.S.C. § 112, second paragraph, as indefinite. II. Claims 1-8, 10, 12, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Moore (US 2007/0233199 Al, pub. Oct. 4, 2007) and Bathiche (US 2011/0314168 Al, pub. Dec. 22, 2011). III. Claims 9, 11, and 13 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Moore, Bathiche, and Johnson (US 6,377,892 Bl, iss. Apr. 23, 2002). DISCUSSION Rejection 1-Irzdefiniteness The Examiner considers the language "the second communication module is further adapted to transmit a data signal configured to encode the resuscitation event data over the communication link" in claim 1 unclear because it gives the impression that the data signal is capable of performing the encoding function and the Examiner queries how a data signal can encode itself. Final Act. 5---6; Ans. 3. In response, Appellants emphasize that claim 1 specifies that the data signal encodes resuscitation event data, and points to paragraphs 79 and 107 of the Specification for support for this limitation. Appeal Br. 8-9. Appellants also submit that "the recited 'data signal' does not encode itself; 3 Appeal2014-004794 Application 13/191,334 rather, it is configured to -and can - encode 'resuscitation event data' as recited by the claims." Reply Br. 2. We fully appreciate the Examiner's concerns about the particular wording of the encoding limitation in the last paragraph of claim 1, which we believe stem from the Examiner's interpretation of the term "encode" in the sense of actively converting information (i.e., data) from one system of communication into another form, which we understand to be at least one ordinary and customary meaning of the term "encode" in the electrical arts. 2 Moreover, this interpretation of the term "encode" appears consistent with the use of the counterpart term "decodes" in Appellants' Specification in the sense of converting encoded data back to its original form. See Spec., para. 108 (stating, "the receiving external defibrillator 601 decodes resuscitation event data from the received data signal"). We do find authority, however, for the use in the electrical field of the term "encode" or "encoding" in the sense of representing data for signal transmission. 3 A person having ordinary skill in the art would understand, as does the Examiner, that the data signal transmitted by the second communication module does not, and 2 See, e.g., encode. (2016). In Merriam-Webster's Learner's Dictionary. Retrieved from http://www.merriam-webster.com/ dictionary I encode (last visited May 23, 2016) ("Encode transitive verb la: to convert (as a body of information) from one system of communication into another; especially : to convert (a message) into code"). 3 See, e.g., encode, encoding. (2000). In IEEE 100 The Authoritative Dictionary of IEEE Standards Terms (7th ed. 2000) ("encode ... (4) (modeling and simulation) To represent data in symbolic form using a code or a coded character set such that reconversion to the original form is possible." and "encoding ... (2) The representation of data bits and nondata information for signal transmission across a serial communications medium."). 4 Appeal2014-004794 Application 13/191,334 cannot, actively convert the resuscitation event data. Consequently, a person having ordinary skill in the art would understand Appellants' disclosure that "the data signal encodes resuscitation event data stored in the transmitting external defibrillator" (Spec., para. 107) to mean that the data signal represents, or carries, the resuscitation event data for transmission. Accordingly, we determine that a person having ordinary skill in the art would understand, with reasonable certainty, that the language "the second communication module is further adapted to transmit a data signal configured to encode the resuscitation event data over the communication link" in claim 1 means that the second communication module is adapted to transmit a data signal configured, or shaped, to represent, or carry, the resuscitation event data for transmission. For the above reasons, while we agree with the Examiner that the last paragraph of claim 1, perhaps, could have been more artfully drafted consistent with the norms of the terminology "encode" in the electrical arts, we conclude that persons skilled in the art would be able to ascertain with reasonable certainty the metes and bounds of claim 1. Thus, we do not sustain the rejection of claims 1-15 under 35 U.S.C. § 112, second paragraph. Rejection II-Obviousness based on Moore and Bathiche In contesting this rejection, Appellants present arguments directed to independent claim 1 and present a separate argument for dependent claim 3. Appeal Br. 9-11. Thus, we select claim 1 as representative of the group consisting of claims 1, 2, 4--8, 10, 12, 14, and 15, with claims 2, 4--8, 10, 12, 14, and 15 standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). We address claim 3 separately. 5 Appeal2014-004794 Application 13/191,334 Claims 1, 2, 4--8, 10, 12, 14, and 15: The Examiner finds that Moore discloses all limitations of claim 1, with the exception that Moore "does not expressly disclose a bump sensor or a bump detector and that the processor establishes the wireless communication link responsive to a determination that a local bump event has occurred." Final Act. 6-7. In particular, the Examiner finds that Moore discloses one defibrillator detecting the other defibrillator and establishing a local wireless communication therebetween "using an inquiry and response procedure," but does not specify how this is done. Id. at 8 (citing Moore, Abstract, paras. 82-83, 74, 75). The Examiner finds that Bathiche teaches using a bump sensor and bump detector along with a processor "to pair together two devices so that [they] can communicate wirelessly." Id. The Examiner determines that "[ o ]ne of ordinary skill in the art could have applied the known" bumping technique to trigger a wireless communication link between the two defibrillators as taught by Bathiche and "the results would have been predictable." Id. at 8-9. Appellants contend that Bathiche is not analogous art because it is not from the medical field. Appeal Br. 9-10. To be analogous art and qualify as prior art in an obviousness rejection, a reference "must satisfy one of the following conditions: (1) the reference must be from the same field of endeavor; or (2) the reference must be reasonably pertinent to the particular problem with which the inventor is 6 Appeal2014-004794 Application 13/191,334 involved." K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012). One problem facing Appellants was how to establish a wireless connection between two devices to transfer data from one of the devices to the other device. Spec., para. 19. Similarly, Bathiche addresses a variety of techniques for pairing devices together (i.e., establishing a wireless connection between them) so that one device has access to the resources of the second device (i.e., to transfer data from one device to the other device). Bathiche, paras. 2, 3, 46. Thus, Bathiche is reasonably pertinent to the particular problem with which Appellants were involved, thereby satisfying at least the second condition of the analogous art test. Bathiche, therefore, is analogous art. Appellants characterize the Examiner's articulation of what a person of ordinary skill in the art could have done as "a general, conclusory assertion" that is insufficient to establish a prima facie case of obviousness. Appeal Br. 10. This criticism has merit, but, in response, the Examiner explains that a person having ordinary skill in the art would have substituted the known bumping communication link or pairing technique taught by Bathiche, which entails "a physical connection that one can see or feel," in place of Moore's "wireless inquiry and response procedure that one cannot see or feel" because in the medical arts "one would feel more comfortable knowing that the physical connection caused the communication link or pairing." Ans. 4--5. This reasoning has rational underpinnings, in that Moore teaches that "[ d]etecting an appropriate one of a plurality of medical devices may be particularly advantageous in situations where multiple defibrillators ... are present for the treatment of multiple patients ... , such 7 Appeal2014-004794 Application 13/191,334 as the scene of a multiple vehicle accident, or within a hospital emergency department." Moore, para. 82. Initiating a pairing using the bumping technology taught by Bathiche would provide the user with an easy and quick, but physically tangible, means of detecting an appropriate one of a plurality of defibrillators in such situations. The modification proposed by the Examiner is nothing more than the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for the improvement. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (noting that such modifications are obvious where they do no more than yield a predictable result). Appellants contend that users of medical devices, such as external defibrillators, are encouraged to exercise care in using them and never to drop or mistreat them in a rugged way, "which can actually make it counterintuitive for a user to 'bump' or otherwise physically touch such devices in order to initiate any transfer of data therefrom or thereto." Reply Br. 3. This contention is an unsupported assertion and, thus, is entitled to little, if any, weight. Appellants do not direct our attention to any evidence in this record to indicate that external defibrillators are any more fragile than the electronic devices discussed in Bathiche or that the type of bump contact described by Bathiche would subject the defibrillator to any greater force than the defibrillator would experience in its ordinary use in resuscitating a patient. Appellants also contend that "Bathiche does not appear to describe a bump detector that is separate from both a bump sensor and a processor as 8 Appeal2014-004794 Application 13/191,334 recited in the claim; rather, Bathiche describes a bump sensor 144 and a processor 140." Appeal Br. 10. The Examiner notes correctly that "this separation feature is not recited in the claim" and, further, directs our attention to disclosure in Appellants' Specification indicating that although "for the sake of convenience only, it is preferred to implement and describe a program as various interconnected distinct software modules or features, individually and collectively also known as software ... and there may be cases where modules are equivalently aggregated into a single program with unclear boundaries." Ans. 5; Spec., para. 95. Thus, we perceive no error in the Examiner's finding that paragraph 32 of Bathiche discloses both a bump sensor (e.g., MEMS accelerometer or piezoelectric sensor) and a bump detector (software on processor 140 for determining whether a signal relayed by the bump sensor indicates a bump has occurred), as well as a processor (processor 140). See Final Act. 8; see also Bathiche, para. 44 (describing a software module in processor 140 for determining whether the detected bump was above a threshold acceleration). For the above reasons, Appellants do not apprise us of error in the rejection of claim 1. Accordingly, we sustain the rejection of claim 1, as well as claims 2, 4--8, 10, 12, 14, and 15, which fall with claim 1, under 35 U.S.C. § 103(a) as unpatentable over Moore and Bathiche. Claim 3: Appellants argue that the portions of Bathiche cited by the Examiner do not appear "to describe anything pertaining to user confirmation from a user." Appeal Br. 11. The Examiner points to paragraphs 42, 43, 53, and 57 of Bathiche in addressing this feature. Final Act. 9; Ans. 5. Paragraph 42 9 Appeal2014-004794 Application 13/191,334 discloses that parameterization descriptors are stored on the initiating and target devices and paragraph 43 of Bathiche discloses, in step 302, the initiating device determining whether any parameterization descriptors were performed and, if so, processor 140 inferring from the bump detection and the identified parameterization descriptor a desire to pair with the target device. The disclosure of paragraphs 42 and 43 is better understood when read in light of the description of parameterization descriptors in paragraphs 33-36. Bathiche's parameterization descriptors are predefined actions or gestures, such as dragging a finger or tapping a touch screen, undertaken by the user, in addition to the bump, to confirm to the processor that the user desires to pair the initiating device to the target device. Bathiche, paras. 33- 36. Thus, we agree with the Examiner that paragraph 43 describes user confirmation from a user, as called for in claim 3. In light of the foregoing, Appellants fail to apprise us of error in the rejection of claim 3. Accordingly, we sustain the rejection of claim 3 under 35 U.S.C. § 103(a) as unpatentable over Moore and Bathiche. Rejection III-Obviousness based on Moore, Bathiche, and Johnson Claims 9, 11, and 13 are directed to transmission of an availability or readiness signal with a time delay. Appeal Br. 15-16, Claims App. The Examiner finds that Bathiche teaches transmitting an availability or readiness signal (i.e., the logging in of the time when the target device was bumped) in paragraphs 45 and 46. Final Act. 12. However, the Examiner finds that Moore modified in view of Bathiche fails to disclose outputting the availability or readiness signal with a preset time delay. Id. at 13. Relying on Johnson's teaching of using a fixed or variable (randomized) time delay to prevent nuisance signals due to noise or interference, the 10 Appeal2014-004794 Application 13/191,334 Examiner determines that it would have been obvious to modify further Moore's defibrillator "to output either the availability or readiness signal with a preset time delay after a time of the bump event and because the results of the combination would have been predictable." Id. at 13-14. Appellants submit that the Examiner fails to establish any reason why a practitioner would have looked to the teachings of Johnson cited by the Examiner in designing the defibrillator of Moore and that combining Moore's device with the cited aspects of Johnson "makes little sense and does not lend itself to predictable results." Appeal Br. 11-12. We agree with Appellants. Johnson discloses a system for alerting the crew of an aircraft when an integrity monitor availability check indicates that one of the five satellites used for position solution and integrity checking is unavailable. Johnson, col. 5, 11. 25--47. In order to avoid nuisance signals due to noise or interference, Johnson provides a delay system configured to receive the integrity monitor availability signal and only provide the signal to the indicator when the signal indicates that the integrity monitoring is unavailable for at least a predetermined time delay. Id., col. 5, 11. 48-54. In Bathiche, the time logged for the target bump timestamp is compared with the time logged for the bump at the initiating device to see if the target device logged a bump at the same time or substantially the same time as the initiating device. Bathiche, paras. 45--46. It is not apparent, and the Examiner does not explain with sufficient clarity, why a person having ordinary skill in the art would have been prompted to transmit (or generate) the target bump timestamp signal with a time delay in the modified Moore 11 Appeal2014-004794 Application 13/191,334 device. 4 Such a modification would interfere with the time comparison. It is not clear how such a modification would prevent nuisance signals due to noise or interference. For the above reasons, the Examiner fails to establish a prima facie case of obviousness of the subject matter of claims 9, 11, and 13. Accordingly, we do not sustain the rejection of claims 9, 11, and 13 under 35 U.S.C. § 103(a) as unpatentable over Moore, Bathiche, and Johnson. DECISION The Examiner's decision rejecting claims 1-15 under 35 U.S.C. § 112, second paragraph, is REVERSED. The Examiner's decision rejecting claims 1-8, 10, 12, 14, and 15 under 35 U.S.C. § 103(a) as unpatentable over Moore and Bathiche is AFFIRMED. The Examiner's decision rejecting claims 9, 11, and 13 under 35 U.S.C. § 103(a) as unpatentable over Moore, Bathiche, and Johnson is REVERSED. 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 4 The Examiner's remark pointing out that Appellants' defibrillator may employ a global positioning system is unavailing in this regard. See Ans. 6. 12 Copy with citationCopy as parenthetical citation