Ex Parte Ecker et al

Patent Trial and Appeal Board

Nov 15, 2017

12361977 (P.T.A.B. Nov. 15, 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.
12/361,977 01/29/2009 Robert Michael Ecker P0029779.01/LG10126 9226
80584 7590
Medtronic, Inc.
710 Medtronic Parkway
MS: LC340
Minneapolis, MN 55432
EXAMINER
CERIONI, DANIEL LEE
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
11/17/2017 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_crdm_docketing @ c ardinal-ip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT MICHAEL ECKER, KAUSTUBH R. PATIL,
JOHN ROBERT HAMILTON, JAMES D. REINKE, and
TIMOTHY DAVIS
Appeal 2016-008161
Application 12/361,9771
Technology Center 3700
Before DONALD E. ADAMS, ELIZABETH A. LaVIER, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
NEWMAN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to an implantable
medical device. The Examiner entered final rejections that certain claims
were indefinite, and that all claims were obvious and directed to
nonstatutory subject matter.
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-
PART.
1 Appellants identify the Real Party in Interest as Medtronic, Inc. App. Br.
3.
Appeal 2016-008161
Application 12/361,977
STATEMENT OF THE CASE
Background
“A variety of implantable medical devices (IMDs) for delivering a
therapy or monitoring a physiologic condition of a patient have been
clinically implanted or proposed for clinical implantation in patients.” Spec.
13.
An implantable medical device may include a master
device that communicates with a plurality of slave devices, such
as sensor modules, in order to monitor various conditions
including, for example, cardiac electrical activity, blood
pressure, blood perfusion, and blood oxygen content. Both the
master device and the slave devices may be implanted within
the body. A bus may be used to provide communication
between the master device and the slave devices. . . .
Implantable medical devices often deliver life-supporting
therapy in the form of electrical stimulation to the patient,
which requires a reliable communication protocol between the
master device and the implantable sensors.
Id. 14.
The Specification discloses:
an implantable medical device that includes a host controller
and a plurality of sensor modules that are implanted within a
patient. The host controller may control the sensor modules to
perform one or more sensor actions in order to facilitate a
measurement. The sensor modules may cooperate with each
other to coordinate timing for performance of one or more
sensor actions across the modules when making a measurement.
When making a measurement, multiple sensor actions may
need to occur in a particular order in order to obtain valid
results for the measurement. In many cases, individual sensor
actions may be performed by distinct sensor modules that share
a common bus. By coordinating the timing for performance of
sensor actions across the sensor modules, the sensor modules
are able to control the timing for performance of the sensor
2
Appeal 2016-008161
Application 12/361,977
actions such that all of the sensor actions occur in the desired
order even if the individual sensor actions are performed by
separate sensor modules.
Id. 1 5.
The Claims
Claims 1—3, 14, 15, 17, 18, 22, and 23 are on appeal. Claim 1 is
illustrative and reads as follows:
1. An implantable medical device comprising:
a host controller configured to transmit a signal over a
two-wire bus; and
a plurality of sensor modules that are each coupled
directly to each wire of the two wire bus to receive the signal
from the bus, wherein a timing coordination for performance of
sensor actions by each of the plurality of sensor modules is
based on the received signal in order to make a measurement,
wherein each of the plurality of sensor modules includes one or
more light emitters and one or more light detectors.
App. Br. 22 (Claims Appendix).
The Issues
The following rejections are before us to review:
Claims 1—3, 14, 15, 17, 18, 22, and 23 are rejected under pre-AIA 35
U.S.C. § 103(a) as obvious over Roberts2 in view of Cinbis.3
Claims 1—3, 14, 15, 17, 18, 22, and 23 are rejected under 35 U.S.C.
§ 101 as directed to nonstatutory subject matter.
Claims 14 and 15 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C.
§112 (pre-AIA), second paragraph, as indefinite.
2 US 6,163,723, issued Dec. 19, 2000 (“Roberts”).
3 US 2008/0208020 Al, pub. Aug. 28, 2008 (“Cinbis”).
3
Appeal 2016-008161
Application 12/361,977
Obviousness
ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that Roberts and Cinbis suggest Appellants’ claimed
invention?
ANALYSIS
The Examiner has rejected claims 1—3, 14, 15, 17, 18, 22, and 23 as
obvious over Roberts in view of Cinbis. Ans. 5—10; 27—33. The Examiner
finds that these references suggest to the ordinarily skilled artisan each
limitation of the pending claims. Id.
Specifically with regard to the arguments raised on appeal, the
Examiner finds that Roberts discloses “a plurality of sensor modules (319,
320) (Fig. 5) (col. 11, lines 57—61) that are each coupled directly to each
wire of the two wire bus (Fig. 5) to receive the signal from the bus (col. 12,
lines 56—59).” Id. at 6. The Examiner further stated in the Final Rejection
that “elements 327 and 328 of Roberts are now included as part of the
claimed wires. Fig. 5 shows the direction of current flowing in which when
the circuit is complete, each of the wires of Roberts is directly connected to
each of the sensor modules of Roberts.” Final Act. 11,4
Appellants argue that the Examiner’s interpretation of diodes 327 and
328 as wires is unreasonable because “a person skilled in the art would not
interpret a diode as a wire because diodes are electronic components and
wires are used to connect electronic components.” App. Br. 19. According
4 Examiner’s Final Action, mailed November 17, 2015 (“Final Act.”).
4
Appeal 2016-008161
Application 12/361,977
to Appellants, the skilled artisan would therefore not interpret diodes ill
and 328 as wires in a “two wire bus.” Id.
Appellants also argue that Roberts does not teach the limitation “a
plurality of sensor modules that are each coupled directly to each wire of the
two wire bus to receive the signal from the bus.” Id. at 20. Appellants argue
“each of sensor 319 and sensor 320 is only connected to a single conductor
of conductors 315 [sic, 313] and 315” and thus fails to teach the “coupled
directly to each wire” portion of the limitation. Id.
The Examiner responds that “Appellants’ specification refers to the
wires of the claimed ‘two-wire bus’ multiple times and consistently refers to
the wires as ‘conductors.’” Ans. 31 (citing Spec. ^fl[ 57, 59). Accordingly,
and further because the Examiner “could not find any portion of Appellants’
specification which limits the wires as only meaning ‘used to connect
electronic components’ as argued [by Appellants]”, the Examiner finds that
interpreting “wires” to mean “a conductor” is consistent with the usage in
the Specification and as understood by the skilled artisan. Id. at 31—32.
With regard to the question of whether Roberts discloses “a plurality
of sensor modules that are each coupled directly to each wire of the two wire
bus to receive the signal from the bus”, the Examiner provides two versions
of Figure 5, annotated to show the Examiner’s findings regarding how
Roberts meets the limitation:
5
Appeal 2016-008161
Application 12/361,977
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Figure 5, shown above with the Examiner’s two annotations, “shows a
switching architecture for selectively activating and deactivating each of two
sensors connected in series to a pair of lead conductors.” Roberts 3:49-52.
6
Appeal 2016-008161
Application 12/361,977
We agree with Appellants that the Examiner has not shown that
Roberts discloses “a plurality of sensor modules that are each coupled
directly to each wire of the two wire bus to receive the signal from the bus.”
As shown in the annotated versions of Figure 5 above, each of the wires 313
and 315 must pass through a switch prior to connecting to the sensor
identified by the Examiner as the sensor that is “coupled directly” to the bus.
A “switch” is “[a] device used to break or open an electric circuit or to divert
current from one conductor to another.”5 Based on this meaning, we agree
with Appellants that the skilled artisan would not understand Roberts’
teaching of routing a wire to a sensor through a switch to meet the claim
limitation “coupled directly.”
A prima facie case for obviousness “requires a suggestion of all
limitations in a claim,” CFMT, Inc. v. Yieldup International Corp., 349 F.3d
1333, 1342 (Fed. Cir. 2003), and “a reason that would have prompted a
person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does,” KSR International Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Absent this showing, which we do not find
on this record, we are constrained to reverse the rejection of claim 1. We
likewise reverse the rejection of claims 2, 3, 14, 15, 17, 18, 22, and 23, as
each claim either depends from claim 1 or similarly includes the “directly
coupled” claim limitation.
5 The American Heritage Dictionary of the English Fanguage,
(https://www.ahdictionary.com/word/search.html?q=switch, definition 2.a.,
accessed November 7, 2017).
7
Appeal 2016-008161
Application 12/361,977
Statutory Subject Matter.
ISSUE
Does the evidence of record support Examiner’s finding that
Appellants’ claimed invention is directed to non-statutory subject matter?
ANALYSIS
In analyzing patent eligibility under 35 U.S.C. § 101, the Supreme
Court has set forth a “framework for distinguishing patents that claim
[patent-ineligible] laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014). According
to that framework, first “we determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. “If so, we then ask,
‘[w]hat else is there in the claims before us?”’ Id. (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78 (2012)). To
answer this second question,
we consider the elements of each claim both individually
and as an ordered combination to determine whether the
additional elements transform the nature of the claim into a
patent-eligible application. [The Supreme Court has] described
step two of this analysis as a search for an inventive concept —
i.e., an element or combination of elements that is sufficient to
ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.
Id. (internal citations and quotation marks omitted).
The Examiner finds that Appellants’ claimed device is directed to
non-statutory subject matter. See Ans. 13—27. According to the Examiner,
the claims are directed to an “abstract idea, as evidenced by the claim
language of ‘a time coordination of sensor actions by each of the plurality of
8
Appeal 2016-008161
Application 12/361,977
sensor modules is based on the received signal in order to make a
measurement.’” Ans. 4. The Examiner finds that:
[t]he abstract idea may be summarized as synchronizing or time
stamping data measurements and/or buffering sample
collection. For example, the claim language encompasses a
person winking their eye according to a mentally thought out
pattern of blinking their eye. This claim language, being
viewed in the context of the claim as a whole, clearly seeks to
tie up the abstract idea.6
Id. For step two of the analysis, the Examiner concluded that the claims
do not appear to recite additional elements that amount to
significantly more [because they] (1) are merely data gathering,
audience determining, and/or stimuli producing
implementation(s) and/or steps that do not apply the judicial
exception in a novel manner, but rather are a pre-requisite
because they supply the data, determine the audience, and/or
produce the stimuli; (2) fail to be tied to a particular machine or
apparatus, or transform a particular article to a different state or
thing; and/or (3) are (i) mere instructions to implement the idea
on a computer, and/or (ii) recitation of generic computer
structure that serves to perform generic computer functions that
are well understood, routine, and conventional activities
previously known to the pertinent industry.
Id.
The Examiner did not separately address claims 1—3, 14, 15, 17, 18,
22, and 23 as to the § 101 rejection, but rejected the claims together based on
the reasoning described above. Our analysis focuses on claim 1 as
representative.
6 Both Examiner and Appellants address whether the rejection qualifies for
“the streamlined eligibility analysis” or whether a “full analysis using the
two-step test” is required. See, e.g., Ans. 4. Because we apply the
framework under Alice, summarized above, we do not address the
applicability of the more simplified analysis.
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Appeal 2016-008161
Application 12/361,977
On this record, even if the Examiner is correct in asserting that
Appellants’ claim 1 includes “the abstract idea [of] synchronizing or time
stamping data measurements and/or buffering sample collection” (Ans. 16;
see id. at 3—4), i.e., the first step of the Alice test; the Examiner failed to
establish that the remaining elements of Appellants’ claim, when read as a
whole, are conventional, routine, and well-understood, i.e., the second step
of the Alice test. The Examiner has, at best, relied upon the combination of
Roberts and Cinbis to support an assertion that certain elements of
Appellants’ claimed invention are conventional, routine, and well-
understood (see, e.g., Ans. 27—32). However, for the reasons discussed
above, we are not persuaded by the Examiner’s assertion. Thus, because the
Examiner failed to establish that Appellants’ claimed invention, when read
as a whole, fails to meet the second step of the Alice test, we are compelled
to reverse this rejection.
For the reasons above, we conclude that the Examiner did not
establish by a preponderance of the evidence that claims 1—3, 14, 15, 17, 18,
22, and 23 are unpatentable under 35 U.S.C. § 101.
Indefiniteness
ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that claims 14 and 15 are indefinite?
ANALYSIS
The Examiner has rejected claims 14 and 15 as indefinite. The
Examiner finds that the claim limitation in claim 14 “wherein a first sensor
module within the plurality of sensor modules is further configured to
perform a first sensor action prior to performing a second sensor action for
10
Appeal 2016-008161
Application 12/361,977
each measurement” is ambiguous because claim 14’s language implies
multiple measurements without proper antecedence. Ans. 3. The Examiner
further finds claim 15 is dependent on claim 14, but does not cure the
ambiguities. Id.
Appellants do not contest or address this rejection in the Appeal
Brief.7 Therefore, we summarily affirm this rejection. See Manual of Patent
Examining Procedure § 1205.02 (“If a ground of rejection stated by the
examiner is not addressed in the appellant’s brief, appellant has waived any
challenge to that ground of rejection and the Board may summarily sustain
it.”).
SUMMARY
We reverse the rejection of claims 1—3, 14, 15, 17, 18, 22, and 23
under pre-AIA 35 U.S.C. § 103(a) as obvious over Roberts in view of
Cinbis.
We reverse the rejection of claims 1—3, 14, 15, 17, 18, 22, and 23
under 35 U.S.C. § 101 as directed to nonstatutory subject matter.
We affirm the rejection of claims 14 and 15 under 35 U.S.C. § 112(b)
or 35 U.S.C. §112 (pre-AIA), second paragraph, as indefinite.
7 Appellants list the indefmiteness rejection in their Reply Brief as being
among those to be reviewed on appeal (see Reply Br. 3), but make no further
mention of it. Even had Appellants offered substantive arguments regarding
the indefmiteness rejection in their Reply Brief, such arguments would have
been new, and thus inappropriate as untimely, in the absence of good cause.
See Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative).
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Application 12/361,977
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).
AFFIRMED-IN-PART
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Notice of References Cited
Application/Control No.
12/361,977
Applicant(s)/Patent Under Patent
Appeal No.
Examiner Art Unit
3736 Page 1 of 1
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