Ex Parte Edwards

Board of Patent Appeals and Interferences

Apr 16, 2008

10378001 (B.P.A.I. Apr. 16, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte D. CRAIG EDWARDS
____________

Appeal 2008-0436
Application 10/378,001
Technology Center 3700
____________

Decided: April 16, 2008
____________

Before WILLIAM F. PATE, III, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-10, 33-42, 75-77, 79, and 92-96. Claims 11-32, 43-74,
78, and 80-91 have been canceled. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002). We AFFIRM.
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THE INVENTION
The Appellant’s claimed invention is directed to the management of
status information from emergency medical devices, such as automatic
emergency defibrillators. The system may include one or more medical
devices and docking stations. The medical device and docking station may
each acquire status information and communicate the information to a
remote unit. The remote unit may be a status monitor that receives status
information from a plurality of medical devices and docking stations in the
system. (Spec. 0009).
Claim 1, reproduced below, is representative of the subject matter of
appeal.
1. A method comprising:
acquiring at a local device that communicates with an
emergency medical device first status information of the local device
from a self-diagnostic routine of the local device;
acquiring at the local device second status information from the
emergency medical device; and
communicating the first status information and the second
status information from the local device to a remote unit.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Morgan US 5,593,426 Jan. 14, 1997
Cronin US 6,301,501 B1 Oct. 9, 2001
Kraus US 6,434,429 B1 Aug. 13, 2002
Lebel US 6,571,128 B2 May 27, 2003
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The following rejections are before us for review:
1. Claims 1-5, 7-8, 33-37, 39-40, and 75-76 are rejected under
35 U.S.C. § 102(e) as anticipated by Kraus.
2. Claims 1-2, 5, 7-10, 33-34, 37, 39-42, 75-76, and 92-96 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Morgan in view of
Lebel.
3. Claims 6, 38, and 77 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kraus and Official Notice.
4. Claims 6, 38, and 77 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lebel in view of Morgan and Official Notice.
5. Claim 79 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Morgan in view of Lebel, and further in view of Cronin.

THE ISSUES
The first issue is whether the Appellant has shown that rejections
made under U.S.C. § 102(e) and 35 U.S.C. § 103(a) using the Kraus
reference are proper. This issue turns on whether the electro medical
implant of Kraus is an “emergency device.”
The second issue is whether the Appellant has shown that the
rejections made under 35 U.S.C. § 103(a) using the Lebel and Morgan
references are proper. This issue turns on whether the Lebel and Morgan
disclose an “emergency device.”
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The third issue is whether the Appellant has shown that the rejection
of claim 79 made under 35 U.S.C. § 103(a) using the Lebel, Morgan, and
Cronin references is proper. This issue turns on whether there are theft and
alert considerations in the proposed combination of references.

FINDINGS OF FACT
We find the following enumerated findings of fact are supported at
least by a preponderance of the evidence1:
1. Webster’s Third New International Dictionary (1971), lists the
primary definition of “emergency” as: 1) an unforeseen combination of
circumstances or the resulting state that calls for immediate action.
2. Kraus discloses that the electromedical implant may be a pacemaker,
defibrillator, cardioverter, or other controlled implant. (Col. 1, ll. 6-9).
3. Webster’s Third New International Dictionary (1971), lists as an
appropriate definition of “pacemaker” as: 2b) an emergency device for
stimulating the heart with an alternating current to steady the beat or to
reestablish the rhythm of an arrested heart.
4. Morgan discloses using defibrillators (14) and communication stations
(24) in Fig. 1. Morgan discloses that external defibrillators may be used
(Col. 2, ll. 29).
5. Lebel discloses a ambulatory medical apparatus in which an
implantable device can self test (Col. 35, ll. 9-11).

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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6. Lebel discloses that the device may include implantable pacemakers,
defibrillators, and neural stimulators. (Col. 2, ll. 26-31).
7. Cronin discloses a defibrillator storage device (10) capable of
protecting the defibrillator from wear and tear and theft. The device also
alerts others when a cardiac arrest incident is in progress (Col. 2, ll. 5-11).

PRINCIPLES OF LAW
Principles of Law Relating to Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim. We determine the scope of the claims in patent applications
not solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim
must then be compared with the prior art.

Principles of Law Relating to Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
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subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18,
(1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 1739, and discussed circumstances in which a patent might be
determined to be obvious. The Court also stated “[i]f a person of ordinary
skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 1740.

ANALYSIS
The Appellant argues that the rejection of claims 1, 33, and 75 as
anticipated by Kraus is improper because Kraus fails to disclose “an
emergency medical device” as recited in the claims (Br. 6-7). The Appellant
argues that Kraus discloses an “electromedical implant” which is intended
for long-term use and is not an “emergency medical device.”
We disagree. When construing claim terminology in the United
States Patent and Trademark Office, claims are to be given their broadest
reasonable interpretation consistent with the specification, reading claim
language in light of the specification as it would be interpreted by one of
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ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). Kraus discloses using an electromedical implant or
pacemaker (FF 2). Pacemakers are considered to be “emergency devices”
(FF 3). The definition of “emergency” includes a “resulting state that calls
for immediate action” (FF 1). We thus consider the time period where the
heart is not working properly and correspondingly, when the pacemaker is
required to be used, “a state that calls for immediate action” or emergency,
making a pacemaker and “emergency medical device.” The Specification
does not provide a definition of “emergency medical device” that is
inconsistent with our definition, and we decline to read a specific
embodiment of “emergency medical device” from the detailed description
into the rejected claims.
For the above reasons, the rejection of claims 1, 33, and 75 as
anticipated by Kraus is affirmed. As the Appellant has not separately argued
the rejection of claims 2-5, 7-8, 34-37, 39, 40, and 76, as anticipated by
Kraus, the rejection of these claims is also affirmed.
The Appellant has argued that the rejection of claims 6, 38, and 77
under 35 U.S.C. § 103(a) as unpatentable over Kraus and Official Notice is
improper only for the same reason that Kraus does not disclose an
“emergency medical device.” For the reasons addressed above, we have
determined that Kraus does disclose an “emergency medical device” and this
rejection of claims 6, 38, and 77 is also affirmed.
The Appellant agues that the rejection of claims 1-2, 5, 7-10, 33-34,
37, 39-42, 75-76, and 92-96 under 35 U.S.C. § 103(a) as unpatentable over
Morgan in view of Lebel is improper because Lebel does not disclose an
emergency medical device (Br. 8). The Appellant also argues that there is
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no motivation to combine Morgan with the teachings of Lebel since Lebel
does not show an “emergency medical device.”
We disagree. Lebel discloses using “pacemakers, implantable
defibrillators, [and] implantable neural stimulators” (FF 6). For the reasons
set forth above, devices such as pacemakers are considered to be
“emergency medical devices.” Regardless, the disclosure of Lebel was not
used to teach “emergency medical devices,” but only for the teaching of
using self-diagnostic equipment. The predictable use of the self-diagnostic
testing of the device of Lebel for its known function of monitoring
equipment status in the device of Morgan is considered to be clearly
obvious. For this reason, the rejection of claims 1, 33, and 75 as
unpatentable over Morgan in view of Lebel is sustained.
As the Appellant has not separately argued the rejection of claims 2,
5, 7-10, 34, 37, 39-42, 76, and 92-96 as unpatentable over Morgan in view
of Lebel the rejection of these claims is also affirmed.
The Appellant has argued that the rejection of claims 6, 38, and 77
under 35 U.S.C. § 103(a) as unpatentable over Morgan in view of Lebel and
Official Notice is improper only for the same reason that Lebel does not
disclose an “emergency medical device.” For the reasons addressed above,
we have determined that Lebel does disclose an “emergency medical
device” and this rejection of claims 6, 38, and 77 is also affirmed.
The Appellant argues that the rejection of claim 79 as unpatentable
over Morgan in view of Lebel and Cronin is improper because the “theft and
damage considerations of Cronin are entirely absent from Lebel” (Br. 12)
since Lebel is “implanted or worn on the body” (Br. 11).
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We disagree. We note again that the rejection only uses the Lebel
reference as a teaching of using self-diagnostic equipment. Morgan
discloses that an external defibrillator may be used (FF 4) and Cronin
discloses that the storage device is capable of protecting the defibrillator
from theft and alerting others when a cardiac arrest incident is in progress
(FF 7). The predictable combination of the protective device of Cronin with
the defibrillator of Morgan and self diagnostic testing of Lebel for the
known benefit of protecting the defibrillator from theft and providing alerts
to others when a cardiac arrest incident is in progress is considered obvious.
The rejection of claim 79 as unpatentable over Morgan in view of Lebel and
Cronin is sustained.

CONCLUSIONS
We conclude that Appellant has failed to show that the Examiner
erred in rejecting claims 1-5, 7-8, 33-37, 39-40, and 75-76 under 35 U.S.C.
§ 102(e) as anticipated by Kraus.
We conclude that Appellant has failed to show that the Examiner
erred in rejecting claims 1-2, 5, 7-10, 33-34, 37, 39-42, 75-76, and 92-96
under 35 U.S.C. § 103(a) as unpatentable over Morgan in view of Lebel.
We conclude that Appellant has failed to show that the Examiner
erred in rejecting claims 6, 38, and 77 under 35 U.S.C. § 103(a) as
unpatentable over Kraus and Official Notice
We conclude that Appellant has failed to show that the Examiner
erred in rejecting claims 6, 38, and 77 under 35 U.S.C. § 103(a) as
unpatentable over Lebel in view of Morgan and Official Notice.
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We conclude that Appellant has failed to show that the Examiner
erred in rejecting claim 79 under 35 U.S.C. § 103(a) as unpatentable over
Morgan in view of Lebel, and further in view of Cronin.

DECISON
The Examiner’s rejection of claims 1-10, 33-42, 75-77, 79, 92-96 is
sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

AFFIRMED

hh

MARY Y. REDMAN
MEDTRONIC, INC.
710 MEDTRONIC PARKWAY NE M.S. LC340
MINNEAPOLIS, MN 55432-5604