Ex Parte Dinsmoor

Board of Patent Appeals and Interferences

Jul 29, 2010

10835424 (B.P.A.I. Jul. 29, 2010)

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.
10/835,424 04/29/2004 David A. Dinsmoor P-71488-US 7522
49443 7590 07/29/2010
Pearl Cohen Zedek Latzer, LLP
1500 Broadway
12th Floor
New York, NY 10036
EXAMINER
TOWA, RENE T
ART UNIT PAPER NUMBER
3736
MAIL DATE DELIVERY MODE
07/29/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID A. DINSMOOR
____________

Appeal 2009-007498
Application 10/835,424
Technology Center 3700
____________

Before: JENNIFER D. BAHR, MICHAEL W. O'NEILL, and FRED A.
SILVERBERG, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007498
Application 10/835,424

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STATEMENT OF THE CASE
David A. Dinsmoor (Appellant) appeals under 35 U.S.C. § 134 (2002)
from the Examiner's decision rejecting, under 35 U.S.C. § 103(a), claims 7-
12 as unpatentable over Hines (US 6,582,365 B1, issued Jun. 24, 2003) and
Yokoi (US 6,951,536 B2, issued Oct. 4, 2005), claims 13, 15, 16, 18, 20,
and 22 as unpatentable over Hogrefe (US 5,415,181, issued May 16, 1995),
Hines, and Yokoi, and claims 19 and 23 as unpatentable over Hogrefe,
Hines, Yokoi, and Schwartz (US 6,783,499 B2, issued Aug. 31, 2004).
Claims 1-6, 14, 17, and 21 were previously canceled. We have jurisdiction
over this appeal under 35 U.S.C. § 6 (2002).

The Invention
Claim 7, reproduced below, is illustrative of the claimed invention.
7. A method comprising:
transducing, via a sensor located proximate to a
gastrointestinal tract of a patient, a sensed physiological
parameter to an analog electrical signal;
storing the analog electrical signal in an analog
memory circuit for later transmission; and
transmitting the analog electrical signal from
inside a body of the patient to a receiver external to the
body of the patient via an analog communication system.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

Appeal 2009-007498
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ISSUES
(1) Whether the Examiner's proposed combination of Hines' analog
biotelemetry sensing and transmitting system and Yokoi's medical
data storing system renders obvious the method of claim 7 having the
steps of transducing, storing, and transmitting an analog electrical
signal.
(2) Whether the Examiner erred in finding that pulse modulated signals
are a special case of amplitude modulated signals.

ANALYSIS
Issue (1) - Hines and Yokoi
The Examiner found that Hines teaches each limitation of claim 7
(Ans. 3), except that Hines does not explicitly teach storing the signal for
later transmission (Ans. 5). The Examiner then found that Yokoi teaches a
method wherein physiological parameters are stored in memory for later
transmission (Ans. 5). Except as expressly discussed below2, Appellant does
not challenge these findings. Thus, we adopt the Examiner's findings as our
own. The Examiner concluded that it would have been obvious to add to the
method of Hines a step of storing the signal for later transmission, as taught
in Yokoi, because the modification "would serve the same purpose" (i.e., the
result is the same) as transmitting the data immediately (Ans. 5), which leads
to the "predictable result" (Ans. 19) of allowing the device to save power by
storing the data and transmitting less often (Ans. 20-21).

2 Appellant argues that the transduced and transmitted signals in Hines are
not the same, and that Hines uses digital, not analog, transmission. Both of
these arguments are unpersuasive.
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Appellant argues claims 7-11 as a group; claims 8-11 stand or fall
with claim 7. 37 C.F.R. § 41.37(c)(1)(vii) (2009). Appellant argues that the
signal stored and the signal transmitted in Hines are not the same as the
signal transduced. Appeal Br. 8-11; Reply Br. 2-4. In particular, Appellant
argues that the signal transduced in Hines is an ECG, whereas the signal
transmitted relates to a heart rate. Id.
Claim 7, however, does not require that the signal being transduced be
the signal that is stored or transmitted, nor does the claim require that the
stored signal be the signal transmitted. Instead, claim 7 requires a signal
transduced from a sensed physiological parameter. A transducer, as used in
the present invention, takes a parameter from a sensor and in turn generates
an electrical signal as a function of the sensed signal. Spec., para. 29. The
signal generated by the transducer "may be processed by analog electronics."
Spec., para. 31. Thus, the "analog electrical signal" is a modified signal
from what the sensor actually generates. Considered within the context of
Appellant's Specification, it is now clear that Hines transmits the same signal
that it transduces. Hines transmits a signal indicative of a patient's heart
rate. Col. 5, ll. 20-42. The sensed (input) signal in Hines is from an ECG
sensor (see fig. 8, item 326), which undergoes processing (see col. 5, ll. 23-
30, fig. 8, items 338, 356, 342) to become an analog signal representing
heart rate (see col. 5, ll. 20-22, 40-42). Thus, the heart rate signal is
transduced from a sensed ECG parameter into an analog signal that is later
transmitted.
Appellant also argues that claim 7 requires that the transmitted signal
be the stored signal (Reply Br. 2-3) but claim 7 has no such requirement.
That is, claim 7 does not require "transmitting the stored analog electrical
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signal." Instead, claim 7 requires that the signal be stored and transmitted,
with no temporal or sequential limitation, which is consistent with the
Specification. See Spec., para. 34 ("a controller … governs whether the
analog signal generated by transducer 24 is transmitted immediately … or …
is stored … for later transmission").
Appellant next argues that there is no motivation to combine the
storage of data in a memory, taught in Yokoi, with the method of Hines'
system. Appeal Br. 11; Reply Br. 4-5. However, a proper conclusion of
obviousness only requires some articulated reasoning with some rational
underpinning. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Here, the Examiner concluded that the addition of the step in Yokoi of
storing data in memory for later transmission would improve the method of
transducing and transmitting signals in Hines by reducing power
requirements by enabling the device to transmit less often. Ans. 20-21.
Hines is concerned with battery life and uses a transmission scheme aimed at
conserving power. See col. 2, ll. 56-60, col. 5, ll. 64-67. Yokoi stores data
in a memory for later transmission. See col. 14, ll. 57-67. As such, the
Examiner's proposed combination seeks to improve the power-saving aspect
of Hines by using a known technique (storing data) that results in the
predictable result of transmitting less often. See KSR, 550 U.S. at 417 ("if a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.").
Appellant presents several additional arguments against the
Examiner's combination: 1) that Yokoi does not suggest an analog memory;
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2) that Hines does not suggest a memory; 3) that it is not clear how the
modification would operate; and 4) that Hines operates in real time, and thus
the Examiner's proposed combination defeats the purpose of Hines. Appeal
Br. 12.
Regarding 1), the Examiner incorporates the teaching of Yokoi to
store data in memory before transmission, not the particular memory
circuitry of Yokoi. See Ans. 5. Moreover, the artisan is not compelled to
blindly follow the teaching of one prior art reference over the other without
the exercise of independent judgment, and thus could utilize the existing
analog structure of Hines when incorporating a memory to store data as
suggested in Yokoi. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881,
889 (Fed. Cir. 1984).
Regarding 2), Appellant appears to confuse obviousness with
anticipation; Yokoi suggests memory use. Regarding 3), the record before
us does not indicate that one of ordinary skill in the art would consider
analog memory to be anything other than an old and well known technique
for storing data. See, e.g., Spec., para. 31 (referencing a patent to describe
an exemplary analog memory circuit). In addition, while the Examiner's
analysis must be explicit, "the analysis need not seek out precise teachings
… for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR, 550 U.S. at 418. In
this case, the prior art suggests the use of memory to store data, and
indicates that analog memory storage is known. Thus, the record indicates
that one of ordinary skill in the art would not have any difficulty in utilizing
the teachings of Yokoi's memory in the analog device of Hines.
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Regarding 4), it is important to note that in any combination, benefits
gained must be balanced with benefits lost. As stated in Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006):
[O]bviousness must be determined in light of all the facts, and
there is no rule that a single reference that teaches away will
mandate a finding of nonobviousness. Likewise, a given course
of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine.
See [Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349
n. 8 (Fed. Cir. 2000)] ("The fact that the motivating benefit
comes at the expense of another benefit, however, should not
nullify its use as a basis to modify the disclosure of one
reference with the teachings of another. Instead, the benefits,
both lost and gained, should be weighed against one another.").
Where the prior art contains "apparently conflicting" teachings
(i.e., where some references teach the combination and others
teach away from it) each reference must be considered "for its
power to suggest solutions to an artisan of ordinary skill....
consider[ing] the degree to which one reference might
accurately discredit another." In re Young, 927 F.2d 588, 591
(Fed.Cir.1991).

Thus, while a benefit of Hines' current configuration is real-time data, this
does not preclude anyone from modifying Hines to have non-real-time data.
For example, some physiological characteristics may not change every 100-
500 ms. See Hines, col. 4, ll. 58-61. The obvious tradeoff is data update
frequency, but if the characteristic does not change quickly, or it is not as
important to have real-time updates, then the benefit of saving power may
outweigh a desire to have several updates a second. Appellant has not
demonstrated that the tradeoffs involved with modifying Hines to store data
and transmit less often to save battery power would prevent one of ordinary
skill in the art from considering the combination.
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Lastly, Appellant presents a new argument in the Reply Brief: that
Hines' transmission scheme is digital. Reply Br. 5-6. However, this
assertion is plainly inaccurate. Pulse Interval Modulation is an analog
transmission technique. See Hines, col. 5, ll. 48-60 (noting the interval
between pulse pairs is proportional to the physiological characteristic), col.
6, ll. 6-9 (noting the pulse interval modulated signal is converted into a
digital pulse stream). Thus, the width between pulse pairs in Hines is
continuous, in direct proportion to the heart rate3. A digital signal could
only approximate the width because digital signals are not continuous. That
the transmitted PIM signal 48 is an analog signal is confirmed by Hines'
disclosure that the receiver 14 "converts" the PIM signal 48 into a digital
pulse stream, and, more specifically, that an RF module 52 at the receiver
demodulates low-frequency PIM signals to produce a digital output signal
54. See Hines, col. 6, ll. 6-18.
As such, the record before us establishes that the Examiner's proposed
combination of Hines' analog biotelemetry sensing and transmitting system
and Yokoi's medical data storing system renders obvious the method of
claim 7 having the steps of transducing, storing, and transmitting an analog
electrical signal. Claims 8-11 fall with claim 7.
With respect to the Examiner's rejection of claims 13, 15, 16, 18, 20,
and 22, Appellant argues that the combination of Hines and Yokoi fails to
teach or suggest storing and transmitting a transduced analog signal. Appeal
Br. 15. This argument is unpersuasive for the reasons identified above with

3 "analog" means "Pertaining to data in the form of continuously variable
physical quantities." IEEE 100 The Authoritative Dictionary of IEEE
Standards Terms, 34 (7th ed. 2000).
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respect to claim 7. With respect to the Examiner's rejection of claims 19 and
23, Appellant argues that Schwartz does not overcome the alleged
deficiencies of Hines, Yokoi, and Hogrefe. Appeal Br. 16. This argument is
likewise unpersuasive for the reasons above.

Issue 2
In the rejection of claim 12, the Examiner found that "pulse
modulation is a special case of amplitude modulation." Ans. 4 (emphasis
omitted). Appellant argues that this is incorrect. Appeal Br. 15. Indeed,
pulse interval modulation (PIM) is not a form of amplitude modulation
(AM) because, as described in Hines, the signal is formed by modulating the
interval between pulses, not the amplitude of the pulse. See Hines, col. 5, ll.
55-60. While some forms of pulse modulation do indeed modulate the
amplitude in addition to the interval between pulses (e.g., pulse amplitude
modulation), pulse interval modulation does not. See, e.g., Saleem Mukhtar,
Interval Modulation: A New Paradigm for the Design of High Speed
Communication Systems (Cal. Inst. Tech., 2004) (available at
http://paradise.caltech.edu/papers/thesis010.pdf) (last accessed Jul. 21, 2010)
(noting figs 2.1 and 2.2, wherein each pulse has constant amplitude in PIM).
As such, the Examiner's rejection has not fulfilled the initial duty of
supplying the requisite factual basis for the determination of obviousness. In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984).
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DECISION
We affirm the Examiner's rejection of claims 7-11, 13, 15, 16, 18-20,
22, and 23. We reverse the Examiner's rejection of claim 12.
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)(1)(iv) (2007).

AFFIRMED-IN-PART

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